"It was never the object of patent laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufactures. Such an indiscriminate creation of exclusive privileges tends rather to obstruct than to stimulate invention. It creates a class of speculative schemers who make it their business to watch the advancing wave of improvement, and gather its foam in the form of patented monopolies, which enable them to lay a heavy tax on the industry of the country, without contributing anything to the real advancement of the arts. It embarrasses the honest pursuit of business with fears and apprehensions of unknown liability lawsuits and vexatious accounting for profits made in good faith." — U.S. Supreme Court, Atlantic Works vs. Brady, 1882

"[Through the U.S. Patent Office] Any idiot can get a patent for something that should never be granted a patent." — Irving Wladawsky-Berger, IBM Vice President of Technology and Strategy (InfoWorld 2005-03-07)

Disclaimer: Most content in this document was written in 2001 and early 2002, when broad consensus had been growing about the "astonishing stupidity" of the U.S. patent system and the consequent need for deep reform. Some progress had been made as of 2003 Q4, after which this became a not-actively-maintained document. Any judgments, analysis, or opinions offered (may) belong to the principal author or to other authors whose publications are cited; they may not be assumed to represent opinions held by OASIS management or by any website sponsor. See some parallel references in "XML and Digital Rights Management (DRM)."

This document is about patents and IP licensing terms in the arena of open standards designed for the Internet. By "standards" we mean the de facto and de jure standards and specifications governing protocols and (meta-)markup languages that have come to provide a technological foundation for the Internet — standards which (until now) can be freely implemented without fear that someone will decide to begin levying license fees for their usage (e.g., TCP/IP, HTTP, FTP, TELNET, HTML, XML, P3P, CSS, XSL, SVG). By "open" we do not refer simply to standards produced within a democratic, accessible, and meaningfully "open" standards process; we refer to standards that can be implemented without asking for someone's permission or signing a license agreement which demands royalty payments or places the licensee under onerous obligations. We mean "open" in the sense of implementable within an open source framework, free of legal encumbrance. We mean "open standards" especially in the sense of Internet protocols and (meta-)markup languages that do not represent, nor have the potential to become, private tollbooths on the Internet highways.

A great many issues in this discussion are unsettled, as revealed by testimony presented on April 18, 2002 in the sessions "Intellectual Property Strategies in Standards Activities" and "Licensing Terms in Standards Activities" as part of the US FTC/DOJ Hearings on "Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy." What would constitute a core, foundational technology in the Internet infrastructure as opposed to 'non-core'? How can we adjust to rapid, unforeseen changes in the marketplace such that technologies are appropriately recharacterized within the matrix of evolving foundational Internet standards? How can we arrive at a formula for defining a "non-discriminatory" yet "fair" license fee in a global environment where wealth is unevenly distributed and the ability to pay so vastly different within different countries? How can we ensure R&D investment in new technologies if royalty-revenue incentives are reduced by the public expectation of legally unencumbered core technologies? How can we ensure healthy competition by smaller/younger companies in the face of increasing patent assertions against standards? How can the open source development communities continue to thrive in a context where critical patented technologies cannot be absorbed into the open source framework? Can bureaucratic/administrative meltdown be avoided if the number of patented technologies continues to rise at the current rate?

Concern for the unimpeded openness of the Internet -- which allows democratized risk-free opportunity for experimentation, innovation, creativity, and competition -- is given birth in a larger legal context of patent proliferation and legislative attempts to control the use of hitherto neutral computing technologies. In the opinion of some authorities, the expanding protectionist trends observable today create a "potentially dangerous situation" that threatens the promise of the Internet's future.

Companies involved in standards activities may promise RAND (purportedly "reasonable and non-discriminatory") license terms for their patented technologies required in the implementation of the emerging standard, but their employees are sometimes prevented from discussing licensing details. The unknown economic effects of licensing terms which are to be revealed only after a patent-encumbered standard is approved present a difficulty for participants who do not hold essential patents. Worse, revelation of patent claims (aka 'patent hold-up' or 'patent ambush') upon the standard may come late, by intention or clerical inadvertence. Even in cases where no submarine patents are involved (as in the FTC's case against Rambus), there may be large disagreement among parties as to what constitutes "reasonable" terms versus extraction of exorbitant royalties from a monopoly position. Submarine pricing policy for previously 'acknowledged' technology can be just as devastating as a torpedo from a surprise patent revelation. Recognizing that technology subject to patent protection which ends up in a final standard "can enhance the quality of the standard and thereby promote both competition and innovation in affected new markets," policy-makers are concerned that "it can also enable the patent holder to obtain and exercise market power and to act opportunistically against its rivals." Most agree that standards work itself is an inappropriate locus for competition, but royalty-bearing patents interjected into the standards process represent competition and are distinctly hostile to cooperation. Beyond merely stifling competition in the appropriate arena, patents in the Internet standards environment may actually harm the industry.

Accordingly, most resources referenced in this document favor mechanisms to reduce legal encumbrances upon open standards stemming from patents, copyrights, license agreements, and license fees. The sources advocate policies for "patent nonproliferation and disarmament" in order to ensure the continued openness of the Internet. The overwhelming public sentiment, especially within the Open Source community, seems to favor the elimination of legal encumbrances upon standards that are critical to an open Internet technology infrastructure. With some exceptions, there is growing sentiment that Internet standards should be developed under an expectation of royalty-free terms of use. For good reasons, some technoloy leaders believe the health of the Internet critically depends upon this foundation. Thus Daniel J. Weitzner (W3C Technology and Society Domain Leader) testified before the United States Department of Justice and United States Federal Trade Commission that "... the Web itself has been possible only in the context of open, royalty-free (RF) standards." Surely some kind of worldwide network would exist today even if patents (monopolies) had been held and license fees extracted for every metered bit travelling in packets under TCP/IP (HTTP, FTP, TELNET, SMTP; SGML, XML, HTML) but many believe that the Internet as we have come to experience it requires royalty-free and license-free terms of access/usage.

According to this view, monopolistic control of Internet standards through patents should be severely restricted, or prohibited entirely as a matter of policy. The potential for adverse control by public sector (government) and private sector (commercial entities) power brokers should be resisted; the opportunity for commercial exploitation of the standards process itself should closely guarded -- so that the process of standards creation is not contorted, subverted, and otherwise compromised by the private goals of individuals or companies seeking to incorporate their patented ideas into public standards. Standards bodies should make it difficult for companies or mini-cartels to hijack resources and process to legitimize their proprietary technology solutions as "standards," using a public institution to subsidize a private commercial agenda and thus serve as a marketing arm. The implementation of open standards should not be impeded by negative incentives arising from the legal requirement to "apply for someone's permission" for use of a standard; nor should development be subjected to the bureaucracy of claims and counter-claims to royalty fees owed various companies for their portion of the intellectual property in a public standard. While some software patents may be legitimate (e.g., processor chip logic?), many believe policies should be established to eliminate their negative effects in the sphere of open standards designed for the Internet.

Of course, patents do legitimately exist in the realm of standards activities under current law. Under a policy of the USPTO that is now coming under fierce attack, (under-researched) unsustainable patents are increasing at an alarming rate, swelling the patent portfolios of large companies dedicated to stockpiling their arsenals of (they say) "defensive patents." But possession of a weapon enforces no obligation upon the owner to use it in every possible circumstance. Standards organizations like W3C, ISO, IETF, and OASIS would be well within their right to ask for voluntary, selective non-enforcement of patents under the jurisdiction of their member companies for standards that provide basic, ubiquitous services and building blocks. A growing public sentiment would ask that these SDOs enact policies which require signs to be posted at the entrance of rooms where working groups and technical committees will convene: No smoking. Check your patents at the door.

Against the backdrop of a common claim that companies are forced to continue to collect and maintain large patent arsenals for defensive purposes, the current [2002-04-25] W3C Patent Policy Working Group Royalty-Free Patent Policy presents the "reciprocal royalty-free license" arrangement. Under these 'Royalty-Free Licensing Requirements' the RF license may not be "conditioned on payment of royalties, fees or other consideration" but may be "conditioned on a grant of a reciprocal RF license to all Essential Claims owned or controlled by the licensee; a reciprocal license may be required to be available to all, and a reciprocal license may itself be conditioned on a further reciprocal license from all." See references in W3C Publishes Royalty-Free Patent Policy Working Draft." Reciprocal RF licensing represents one means of recognizing intellectual property while eliminating the threat of (e.g. RAND) royalty fees which could dramatically alter the balance of power in favor of companies holding vast patent portfolios.

"Sun Microsystems, Inc. ('Sun') will offer Royalty-Free Licenses to any Essential Claims owned or controlled by Sun necessary to implement the XML Pipeline Control Language ('Pipeline') Note or any W3C Recommendation-track or Recommendation-level specification based on Pipeline. One precondition of any such license granted to a party ('licensee') shall be the licensee's agreement to grant reciprocal royalty-free licenses to any Essential Claims owned or controlled by the licensee to Sun and other companies necessary to implement the Pipeline Note or any W3C Recommendation-track or Recommendation-level specification based on Pipeline..."

Paraphrase: "With respect to any battle on this field, we lay down our weapons of patentry; we will not use them against anyone else on the field who similarly lays down their weapons. Here is our signed declaration."

A similar kind of solution aimed at neutralizing software patents might involve "joint buying scenarios" which sidestep antitrust and adhere to FTC/DOJ "Antitrust Guidelines for Collaborations Among Competitors," where it is allowed that "agreements jointly to purchase necessary inputs... do not raise antitrust concerns and indeed may be procompetitive." HP's Scott Peterson has argued that this "may often be the most efficient if not the only practical way of avoiding patent holdup or ambush problems and should be considered presumptively procompetitive on that ground." Yet another solution may be the creation of "public domain" reciprocal-license patent pools to which companies voluntarily contribute large number of patents, including patents embodying essential claims relevant to standards implementation; companies refusing to contribute (some reasonable proportion of) relevant patents the public pool would be placed at economic or political disadvantage. The goal in each case would be to free open standards from legal encumbrances and economic disincentives. Ample room is available for differing outlooks, however; some believe for example "patents are allowable in standards and specifications where the scope of licensing is not punitive."

Solutions to the growing "patent problem" will require creativity (new business models) as well as models of leadership in which standards bodies, individual companies, and courageous individuals can blaze a new trail. Arguably, charting these new paths will require that technology leaders take the high road in terms of focus upon the long-term global Good -- as opposed to a singular short-term mandate to maximize corporate profits. Arguably, leadership will require the courage to pronounce ichabod upon familiar institutions which have become so compromised that they no longer support their original constitutional purpose.

Companies desiring to collect revenue from patent royalties frequently make statements of the following kind, designed apparently to put their competitors and the paying public at ease: "We are willing to grant licenses for this technology to all under reasonable and non-discriminatory terms and conditions." By what means are we supposed to be comforted by such a promise? The notion that RAND ("reasonable and non-discriminatory") terms and conditions protect the public needs to be debunked. RAND puts the patent owner in control of a government-backed monopoly. RAND offers no certain protection against license fees that constitute oppressive global taxation, and it may be judged highly discriminatory. Hence one writer's characterization of RAND as an expanded acronym: "half of 'RAND' is deceptive and the other half is prejudiced."

The English word "reasonable" sounds assuring, and "non-discriminatory" rings with political correctness. But RAND licensing terms pose a potential threat to the health of an open, accessible Internet; this verdict has been reached by IP experts and by common persons having common sense, revealed in several thousand emails sent to the W3C public comment mailing list. The 2002-02 draft Patent Policy Working Group Royalty-Free Patent Policy from the W3C Patent Policy Working Group exposes the threat of RAND and seeks to implement an alternative royalty-free (RF) policy framework. The argument for RAND as "reasonable and non-discriminatory" is flawed at many levels. For example:

A royalty fee reasonable for one wealthy US software company may not be reasonable for a software development project in a third-world country, or for public hospitals, museums, and elementary schools. A royalty fee paid directly by an end user (based upon metered usage of the Internet) may be reasonable for a CEO living in the California Silicon Valley, but quite unreasonable for a student in a poor region of Eastern Europe or Africa -- who can barely afford to be connected to the Internet at all. Note that the MPEG LA proposal already establishes per-minute use fees for MPEG-4 video data.

Reasonable defies formulation of an operational definition which can serve to guarantee to multiple parties that the fair interests of all will be served -- once the details of a future licensing agreement are worked out. Thus Sun's Carl Cargill writes: "The lack of a clear, equitable, and easily understood definition for the term RAND is one of the major sticking points in ICT [Information and Communications Technologies] industry. Small companies and individuals fear gouging by big companies; large companies fear diminution of their IPR portfolios..." (Failed Evolution page 4, note #8). Clarity and non-ambiguity are not so problematic as "equitable," which depends largely upon one's perspective and situation in life, including ability to pay. The W3C's description of "Reasonable and Non-Discriminatory (RAND) License" in the 2001-08-10 Patent Policy Frequently Asked Questions (FAQs) document does not hint at a method or metric for "reasonable."

A price judged reasonable as a royalty fee for one single patent considered in isolation may become quite unreasonable when taken in aggregate (e.g., when added to 25 or 125 other "reasonable" fees for companion patented technologies), or when embedded into the very foundation/core (and still developing) layered Internet architecture.

As James Clark, Richard Stallman, and many W3C's readers have argued, RAND is discriminatory. In particular, it discriminates against open source software and core principles of the open source philosophy. As Jim Bell writes, of RAND in the W3C context: "RAND ignores the importance of open source. Open source is one of the most powerful, creative forces in computing today, and W3C patent policy should facilitate it rather than blocking it via RAND royalty fees."

RAND also discriminates against anyone not economically empowered to pay the same royalty fee as can be paid by a wealthy, powerful software company (Microsoft, IBM) or media conglomerate (AOL Time Warner). A patent license agreement with a $15,000 initial fee disproportionately impacts and thus discriminates against small companies having a relatively small or insignificant market share.

Uniform ('non-discriminatory') rates thus discriminate potentially against some of the highest values of an open and fair society, which recognizes the differential ability to pay (levels in tax structures, variable subscription rates, scaled consortium dues, medicare) and recognizes the benefit of a design policy that makes some resources both free and freely accessible to all (public libraries, parks). According this social principle, the Internet "information commons" needs to be free especially for the benefit of those unable to pay -- not taxed under RAND terms antithetical to this core value.

Beyond these problems bound up in RAND's claims to being inherently "reasonable and non-discriminatory," RAND principles made operative in a standards setting create additional difficulties, vis-à-vis a royalty-free arrangement. Some have been identified previously. A brief [2001] publication by Jim Bell in connection with W3C operations lists these other concerns as follows:

RAND can distort the standards selection process: a Working Group not fully informed about the details of RAND licenses (which are not required or allowed to be revealed in advance) may be "forced to choose between two approaches, one free and one expensive, without knowing which is which."

RAND allows users to be ambushed and exploited: since RAND "allows the price for essential patent rights to be set after their use is mandated by a W3C standard, users cannot predict their costs until too late and can find themselves at the mercy of a patent holder."

RAND's scope of applicability [in the W3C setting] is inadequately defined because of the 'imprecise and moving boundary for Web infrastructure': "Even advocates of RAND licensing concede that Web infrastructure standards should be royalty free, and that RAND licensing at W3C should be applicable only to standards above the infrastructure level; but no one has been able to draw the dividing line separating the levels. In any case, such a dividing line would be steadily rising over time -- as formerly optional capabilities become standard parts of the infrastructure... With RAND licensing, this natural evolution could create royalty-bearing infrastructure standards, a prospect universally agreed to be unacceptable."

Managing RAND licensing terms is burdensome [to W3C and its Members]: "One of the greatest challenges to W3C is being able to move at a pace commensurate with its role in the industry and with the reasonable expectations of the broader community. Issues connected with RAND licensing at W3C undeniably have already proven themselves to be an immense source of [complexity], delay, and wasted effort."

[Note: As noted below, 'RAND' indeed can approximate 'RF' if the royalty fee is declared to be zero, eternally and irrevocably; in such case, why insist on RAND license at all, as it probably implies bureaucratic overhead? The issue is control: RAND license typically puts the patent holder in a position to set a tariff and collect a toll. If someone says in a contract negotiation "Give me control, but I don't worry, I don't intend to actually use it" -- they should probably not be believed.]

[New section under development 2002-08-15. This section should present the point of view that RAND license/royalty is a good idea, applicable to open standards designed for the Internet. These arguments should be considered in counterpoint to arguments presented in the previous section: "Why RAND is Not Appropriate for Internet Open Standards." The readership is invited to send email nominating arguments and/or URLs germane to this section; equally, the readership is invited to send comments/suggestions pertaining to any section of this document.]

Initial thoughts:

RAND licensing terms may be unavoidable or preferable to the alternative in situations where 'IPR encumbrance' is part of the current technology scene. That is, accepting RAND license terms for technology in a developing standard may be preferable to (1) waiting until some new UN-encumbered technology is available, or (2) an end-run to 'work around' an existing encumbered technology by avoiding key steps in an algorithm. In one of the draft documents produced by a member of the IETF IPR Working Group ("Guidelines for Working Groups on Intellectual Property Issues") it is stated: "It will always be better for the Internet to develop standards based on technology which can be used without concern about selective or costly licensing. However, increasingly, choosing an unencumbered technology over an encumbered alternative may produce a significantly weaker Internet. Sometimes there simply isn't any unencumbered technology in an area."

RAND may be acceptable if the royalty fee is guaranteed to be zero, for eternity [possibly "with reciprocity"] accompanied by terms which bind the patent holder to a permanent, unconditional, irrevocable grant of freedom under the license. RAND license at zero cost can thus approximate "RF + reciprocity," although there may be significant legal differences. See the IBM statement on ebXML, for example, which says [2002-06-07] that the RF license will be "free for all time" -- "Patents are granted and remain enforceable until they are either abandoned or until 20 years from the original application date". In such a case, the legal encumbrance is apparently reduced to a bureaucratic detail amounting to application for a license (with submission of a signed form) and waiting [an unspecified period of time] for a reply. An infinite number of fatal (pre-)conditions, qualifications, restrictions, and limitations could be incorporated into a license agreement, of course, which would render the notion of "RAND, zero cost license" a poor substitute for RF, or render it utterly useless. For example, a company might agree to RAND zero cost terms for patents pertaining to the implementation of a standard, version 1.0, knowing full well that complete functionality will not be delivered until version 2.0 of the specification is released. Or a company might specify license pre-condictions such as (e.g.,) "by accepting this license agreement you legally certify that your implementation of the patented/to-be-licensed technology for which you request license is fully conformant with the specification XXXX according the judgment of YYYYY (corporate entity) against the conformance standard ZZZZ, as may be amended from time to time..."

RAND or RANDZ are important instruments in negotiations between companies seeking to clarify their mutual obligations with respect to patented technologies in zero-royalty-fee implementation environment. Companies need the freedom to craft language specific to particular patents in particular implementation contexts in order to clarify limitations and qualifications upon a zero-fee declaration. It is unreasonable to expect that a single boilerplate license applicable to all companies could adequately protect legitimate concerns for fairness (e.g., terms for reciprocity). A RAND license framework may be the best solution.

While an SSO or single company may strongly support RF specifications in a majority of "open Internet" situations, it is unreasonable to believe that we know enough about the future of computing to write a universal RF-only patent policy into stone. Standards consortia and corporations are better served by maintaining a policy of flexibility. Note: The model articulated by IBM is exemplary in this connection, as the company considers royalty issues for standards-related patents on a case-by-case basis; this policy is not incompatible with the (often) recognized need to declare a disposition in the early stages of a standard's development. See below, "IBM Proposes a Patent Commons for Royalty-Free Open Source Software Development."

RAND licensing with royalty fees should be considered positive in some situations where the revenue generated can be used to financially support other software R&D governed by RF expectations. It is common, under such a policy, for large companies having significant software patent royalty revenue (IBM reportedly has 2 billion annual; see 2002 data) to contribute substantial portions of its development to Open Source software initiatives and otherwise to license its experimental software for free (e.g., IBM alphaWorks and Eclipse).

1. Hewlett-Packard. Hewlett-Packard Company has provided an exemplary model of leadership that other companies are free to emulate. See the published statements of Jim Bell on RF in the W3C context, and comments of Scott K. Peterson in his 2002-04-18 testimony to the US DOJ/FTC. Note that HP has a considerable commercial stake in software patents: according to a statement from Bruce Perens (unverified), "... IBM is said to hold 10% of software patents, and HP is one of the largest patent holders in general." The statements of Jim Bell and Scott Peterson should be read in this light.

[October 2001] "HP Supports Royalty Free Standards for Web Infrastructure." Compiled by Bruce Perens (bruce_perens@hp.com). With a statement by Jim Bell (W3C Advisory Committee Representative, Director of Standards and Industry Initiatives, Hewlett-Packard Company), responding on behalf of Hewlett-Packard to the W3C Patent Policy Framework draft 16-August-2001. "HP has been a leader in the advocacy of royalty free infrastructure standards for the Web... We have backed up our words with actions. For example, HP resigned as a co-submitter of the otherwise excellent Web Services Description Language (WSDL) proposal to W3C solely because other authors refused to let that proposal be royalty free. There are sharp differences among companies on patent licensing for standards... Hewlett-Packard's position is that the fundamental standards for the Web should be royalty free." [cache]

[April 18, 2002] "The W3C Needs to Be Royalty Free." By Jim Bell (Hewlett-Packard). In ZDNet Tech Update (April 12, 2002). "Currently a fiery debate is raging concerning whether standards from the World Wide Web Consortium (W3C) should be royalty free or whether some might require patent royalties. The latter approach, referred to as RAND (Reasonable And Non-Discriminatory), is supported by companies such as IBM. Other companies, such as Hewlett-Packard, feel passionately that free, open, technically excellent standards have been the foundation for the Web's success in the past, and that they will be equally fundamental in the future. In particular, we feel that the ability to use W3C standards without charge will be essential to their quick acceptance and to their universal acceptance. Why do we have such a strong preference for royalty-free licensing over RAND licensing for W3C standards? Patent policies for standards organizations may rationally vary based on organizations' specific circumstances and technologies, but in the case of W3C, we view the RAND licensing alternative as fundamentally flawed for reasons including the following: [...] For Hewlett-Packard and many others, including the vast majority of the more than two thousand people who have written to W3C to share their views, the conclusion is clear: To enable the Web to extend its meteoric growth in capabilities, acceptance and beneficial impact, W3C standards must remain royalty free now and in the future." Note: This story originally ran on CNET's News.com on October 12, 2001; it was republished on April 12, 2002 as "historical context" for an April 2002 discussion about legally encumbered standards in the WWW and Web Services arena, including a report of an IBM patent on ebXML-related specifications. See also "HP's Proposal for W3C Standards," posted to the W3C mailing list October 13, 2001.

[April 18, 2002] "Patents and Standard-Setting Processes." Statement of Scott K. Peterson (Hewlett-Packard Company) for FTC/DOJ Hearings on Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy. April 18, 2002. 13 pages. "My focus is on standards that enable interoperability among both competing and complementary products employing new technologies, presenting some challenges beyond those involved in more traditional safety or related kinds of standards... If a party promoting use of its patented technology for incorporation in a proposed standard states it is willing to offer a license on terms that are 'reasonable and nondiscriminatory' (but terms that are not otherwise specified), consideration of the impact of the patent on the proposed standard often ends at that point -- indeed some participants insist any further or more specific discussion about it would invite antitrust trouble. But all potentially affected parties have a legitimate interest in knowing before a standard decision is made what the economic effects will be of accepting a patent into the standard. Nonetheless, when suggesting that licensing terms be considered, we have encountered the objection that doing so could invite antitrust challenge. Indeed, some standards organizations expressly prohibit consideration of license terms in their rules. These objections are unfounded. To the contrary, disclosures of the sort we have suggested would be procompetitive by foreclosing opportunistic hold-up situations that are all too easy to arise when a patent holder's view of 'reasonable' license terms remains secret until after a standard has been adopted. To be more specific, consider a circumstance where a consortium is developing what is expected to be a critically important standard that defines the infrastructure for a whole array of next-generation products that all consortium members and other parties as well need to develop to remain in the affected market space. One consortium member promotes specifications based on technology that it has patented and the patent is appropriately disclosed during the process. Other consortium members see technical benefits to those specifications but also recognize alternative approaches that would entail countervailing benefits as well as avoiding any need for users to obtain patent licenses. The patent holder's proposal might be considered the 'best technical solution' but that does not necessarily make it the 'best solution' when the overriding objective is a standard that ensures a level playing field and robust competition in the new market that the standard is designed to foster. A standard that enables one user to extract exorbitant royalties from all other users could, in this light, be the 'best technical solution' but not by a long shot the 'best solution' either for the industry generally or from the broader standpoint of the public interest... In short, the sort of 'joint negotiation' or joint consideration of license terms during a standard-setting process that I have described in my example should be unassailable under the governing antitrust rule of reason. Indeed, as I have already suggested, it may often be the most efficient if not the only practical way of avoiding patent holdup or ambush problems and should be considered presumptively procompetitive on that ground. Limitations on the scope of or other safeguards attaching to this activity can be fashioned to obviate concern over any countervailing anticompetitive risk. The bottom line, in my view, is that it is desirable and in the public interest that standard-setting groups be not only permitted but encouraged to experiment with various mechanisms for consideration of specific license terms before decisions on the content of a standard are engraved in stone..." [cache]

2. Apple Computer. In October 2001, Apple Computer published a response to the draft W3C Patent Policy Framework. The statement articulated a principled dedication of Apple Computer to "royalty-free" standards in the W3C context. Excerpts:

After careful consideration of the draft patent policy, Apple believes that it is essential to continued interoperability and development of the Web that fundamental W3C standards be available on a royalty-free basis. In line with the W3C's mission to 'lead the Web to its full potential,' Apple supports a W3C patent policy with an immutable commitment to royalty-free licensing for fundamental Web standards. Apple offers this statement in support of its position.

The promise of the Web is a common framework for exchange of information, with open access for a diverse pool of developers and users. Realization of this promise demands a licensing model that is likewise open and unencumbered by private rights. We believe that W3C membership should involve not only collaboration to develop standards, but also collaboration to ensure that those standards are, in fact, open and available to diverse users without charge.

... Apple believes that W3C should promulgate only royalty-free standards, but should permit individual members to identify and exclude specific patents that they are not willing to license on a royalty-free basis... In order to proliferate royalty-free Web standards, a member's obligation to license essential patents could be conditioned on the grant of a reciprocal royalty-free license by any practitioner.

While the current [August 2001] draft patent policy does state a 'preference' for royalty-free standards, the ready availability of a RAND option presents too easy an alternative for owners of intellectual property who may seek to use the standardization process to control access to fundamental Web standards. A mandatory royalty-free requirement for all adopted standards will avoid this result.

Update 2006: Sun Microsystems has been a leading pioneer and advocate of the "Non-Assertion Covenant" as an instrument for removing barriers to standards development and adoption: the non-assertion covenant can operate independent of an SSO's patent policy. It embodies "proactive promises [coming from Sun] about not enforcing patents against developers" using current and future related specifications... it means that developers of standards-based technology can be assured that Sun will not impose on them any licensing terms, conditions or fees for the use of any patents held by Sun relating to that technology... dvelopers need not do anything active in order to get this assurance; they merely need to refrain from attempting to enforce their own (or others') patents against any other developers... Examples:

[Vintage 2001/2002 text:] Sun came under fire for its handling of a (most people said "dubious") patent relating to XPointer, but this was resolved favorably with W3C. We may hope that the following statements from Simon Phipps, Simon Nicholson, Bill Smith, and Jonathan Schwartz of Sun are quoted accurately and that their declarations represent an abiding public commitment from Sun Microsystems.

[Excerpted from Steve Gillmor's InfoWorld article "Out of Order": "... We want to be a founding member [of the Web Services Interoperability Organization ] so that we can fix the bug in WS-I, which has been built in by its founders about preserving the royalty control of future standards on the Internet.' Sun's position, Phipps says, is that the infrastructure of the Internet should be royalty free'..."

[Excerpted from David Berlind's article 2002-04-11] "... W3C's D. Weitzner also acknowledges that, in addition to HP, Apple and Sun are wholeheartedly behind the royalty-free movement too. According to Sun's Manager of XML Industry Initiatives Simon Nicholson, 'Anyone should be able to use the specifications that define the Internet infrastructure without charge. We believe the best route to ensuring this is that such specs be licensed under royalty free terms.' Sun backed that position up when it relinquished a set of IP rights it had -- a move that cleared the way for the royalty-free use of the W3C standard for Xlink'..."

[Excerpted from Wylie Wong's article "Sun Switches Gears On Encryption," 2002-06-27] "... Sun had been devising its own rival Web services security specification, but the royalty-free licensing of WS-Security specifications allayed Sun's concerns... said Bill Smith, Sun's director of Liberty Alliance technology: 'Web infrastructure on a royalty-free basis is an important thing as well... We've made no secret of our views on the need to do things on an open and royalty-free basis'..." See the full context for details.

[Excerpted from Paul Festa's ZDNet article "Standards Stalled Over Royalty Disputes": "... Sun has also emerged as a major proponent of unpaid standards, convening a royalty-free standards group called the Liberty Alliance Project to develop online authentication services. In addition, the company held out for royalty-free provisions before joining a high-profile Web security group last month. 'We do not believe in taxing people for use of those standards,' Jonathan Schwartz, Sun's software chief, said..."

[October 11, 2001] "O'Reilly Opposes W3C Patent Policy." By Dale Dougherty (Publisher of the O'Reilly Network; Director of O'Reilly Research). ['The following message was submitted to the W3C in response to its request for comment on its proposed Patent Policy Framework.'] "We believe that the Web's success depends on fully open standards that can be implemented without restrictions by open source developers as well as commercial developers, large and small. Therefore, we oppose RAND licensing as an option for W3C working groups that are developing standards. W3C work should be done exclusively on a Royalty-Free basis, as it has up until now. That is the only way the W3C can ensure that a Web standard truly serves the public good. We oppose RAND because requiring developers to pay is discriminatory... The W3C's responsibility to the entire world of web users must come before its obligations to its members. We would like to see Tim Berners-Lee affirm his commitment to completely open standards and use his position as the Director of the W3C as well as the inventor of the Web to defend the Web against academic, governmental or commercial efforts to impose new restrictions. At the very least, the W3C should not be endorsing such restrictions, as the patent policy framework clearly does. W3C policy should seek to remove obstacles to openness rather than accommodate members who come bearing patent portfolios..."

4. Honorable Mention. While not qualifying as global statements of principled opposition to RAND (royalty-tolerant) licensing of patented software in the Internet standards arena, the following constitute encouraging actions and statements. Representative and by no means exhaustive.

In July 2002, the IETF chartered an Intellectual Property Rights Working Group.

RFCs were published for Intellectual Property Rights in IETF Technology, IETF Rights in Contributions, and Guidelines for Working Groups on Intellectual Property Issues. See references below.

Description of Working Group [2002-07-26]: "The IETF and the Internet have greatly benefited from the free exchange of ideas and technology. For many years the IETF normal behavior was to standardize only unencumbered technology. While the 'Tao' of the IETF is still strongly oriented toward unencumbered technology, we can and do make use of technology that has various encumbrances. One of the goals of RFC2026 'The Internet Standards Process -- Revision 3' was to make it easier for the IETF to make use of encumbered technology when it made sense to do so. The IETF IPR policy, as embedded in RFC 2026 section 10, has proven fairly successful. At the same time, a perceived lack of textual clarity on some issues have made necessary the publication of clarifications such as the 'note well' statement issued in every registration package, the I-D boilerplate rules, and a huge number of discussions on specific IPR-related issues. This working group is chartered with updating and clarifying section 10 of BCP 9, RFC 2026, which deals with intellectual property rights, including, but not necessarily limited to, patent rights and copyrights."

Update 2003-05: As of November 2003, the mailing list was still quite active, and many issues were still under debate. Despite the attempts of some members to effect reform, little progress had been made toward the creation of a framework for reconciling RAND licensing terms with goals of open source projects.

References:

IETF IPR Working Group. See this document for current URLs (superseding those (I-Ds) referenced below which will often be broken, under IETF standard practice.

RFC 3978 Update. June 2006. Reference: 'draft-ietf-ipr-rules-update-05.txt'. "This document modifies RFC 3978 "IETF Rights in Contributions" as follows: (1) recognizing that the IETF Trust is now the proper custodian of all IETF-related intellectual property rights, (2) giving IETF Trust the right to permit extraction of material from RFCs, and (3) giving IETF Trust the right to permit others to create derivative works outside the IETF Standards Process."

"IETF Rights in Submissions." Edited by Scott Bradner (Harvard University). IETF Network Working Group. Internet-Draft. April 2003. Reference: 'draft-ietf-ipr-submission-rights-04.txt'. "The IETF policies about rights in submissions to the IETF are designed to ensure that IETF contributions can be made available to the IETF and Internet communities while permitting the authors to retain as many rights in the document as possible. This memo details the IETF policies on rights in submissions to the IETF..." [cache]

Earlier references:

"Intellectual Property Rights in IETF Technology." By Scott Bradner (Harvard University). IETF Network Working Group, Internet-Draft. Reference: 'draft-ietf-ipr-technology-rights-04.txt'. "The IETF policies about intellectual property rights (IPR), such as patent rights, relative to technologies developed in the IETF are designed to ensure that IETF working groups and participants have as much information about any IPR constraints on a technical proposal as possible. The policies are also intended to benefit the Internet community and the public at large, while respecting the legitimate rights of IPR holders. This memo details the IETF policies concerning IPR related to technology worked on within the IETF. It also describes the objectives that the policies are designed to meet. This memo updates RFC 2026..."

"Guidelines for Working Groups on Intellectual Property Issues." By Scott Brim (Cisco Systems, Inc). IETF IPR Working Group. Internet-Draft. Reference: 'draft-ietf-ipr-wg-guidelines-02'. March 1, 2003, expires August 30, 2003. 18 pages. "This memo lays out a conceptual framework and rules of thumb for working groups dealing with IPR issues. The goal is to achieve a balance between the needs of IPR claimants and the implementers of the Internet which is appropriate to current times. As part of trying to distill out principles for dealing with IPR in IETF working groups, it provides case studies of treatments of IPR issues that have already been worked out. In other words, it documents the running code of the IETF process. The memo is for working groups that are trying to decide what to do about IPR-protected technology contributions." [cache]

"IETF Rights in Submissions." By Scott Bradner (Harvard University). IETF Network Working Group, Internet-Draft. Reference: 'draft-ietf-ipr-submission-rights-02.txt'. March 2003. 14 pages. "The IETF policies about rights in submissions to the IETF are designed to ensure that IETF contributions can be made available to the IETF and Internet communities while permitting the authors to retain as many rights in the document as possible. This memo details the IETF policies on rights in submissions to the IETF. It also describes the objectives that the policies are designed to meet." [cache]

Earlier References:

"Intellectual Property Rights in IETF Technology." By Scott Bradner (Harvard University). IETF Network Working Group, Internet-Draft. Reference: 'draft-ietf-ipr-technology-rights-02.txt'. March 2003. 14 pages. "The IETF policies about intellectual property rights (IPR), such as patent rights, claimed relative to technologies developed in the IETF are designed to ensure that IETF working groups and participants have as complete information about any IPR constraints on a technical proposal as possible. The policies are also intended to benefit the Internet community and the public at large, while respecting the legitimate rights of IPR holders. This memo details the IETF policies concerning IPR related to technology worked on within the IETF. It also describes the objectives that the policies are designed to meet." [cache]

IETF Rights in Submissions. By Scott Bradner (Harvard University). IETF Network Working Group, Internet-Draft. Reference: 'draft-ietf-ipr-submission-rights-00.txt'. October 2002. "The IETF policies about rights in submissions to the IETF is designed to ensure that IETF contributions can be made available to the IETF and Internet communities while permitting the authors to retain as many rights in the document as possible. This memo details the IETF policies on rights in submissions to the IETF. It also describes the objectives that the policies are designed to meet." [cache, source was removed]

"Intellectual Property Rights in IETF Technology." Edited by Scott Bradner (Harvard University). IETF Network Working Group, Internet-Draft. October 2002. Reference: 'draft-ietf-ipr-technology-rights-00.txt'. "The IETF policies about intellectual property rights (IPR), such as patent rights, claimed relative to technologies developed in the IETF are designed to ensure that IETF working groups and participants have as complete information about any IPR constraints on a technical proposal as possible. The policies are also intended to benefit the Internet community and the public at large, while respecting the legitimate rights of IPR holders. This memo details the IETF policies concerning IPR related to technology worked on within the IETF. It also describes the objectives that the policies are designed to meet." [cache]

The Java Community Process (JCP) is "an open organization of international Java developers and licensees whose charter is to develop and revise Java technology specifications, reference implementations, and technology compatibility kits. Both Java technology and the JCP were originally created by Sun Microsystems, however, the JCP has evolved from the informal process that Sun used beginning in 1995, to a formalized process overseen by representatives from many organizations across the Java community." On October 29, 2002 the "JCP Program Management Office (PMO) today launched a new iteration of the program, JCP 2.5. The new agreement and governing rules give more freedom and equal standing to all Java community participants enabling them to implement compatible Java specifications under a license of their own choosing including open source licenses. The Java Specification Participation Agreement (JSPA) requires all Java specifications to allow for development and distribution of compatible independent implementations, make specification products available separately and offer Technology Compatibility Kits (TCK) free of charge to qualified non-profits, educational organizations and individuals. The JCP 2.5 process document focuses on the implementation of the new agreement and on the continued availability of Java APIs as part of or independent of platform specifications..."

The Open Applications Group is "a non-profit consortium focusing on best practices and process based XML content for eBusiness and Application Integration. It is the largest publisher of XML based content for business software interoperability in the world. Open Applications Group, Inc. members have over 6 years of extensive experience in building this industry consensus based framework for business software application interoperability and have developed a repeatable process for quickly developing high quality business content and XML representations of that content."

The Open Applications Group owns the copyright of any document written by OAGI. It is the goal of the OAGI to maintain the ability for OAGI members and non-members to use OAGI materials on a royalty free basis.

OAGI materials includes the OAGIS specification, the XML Schemas, OAMAS Downloads, presentations, white papers, or any other published document ('OAGI Materials').

OAGI commits that, in the development of any standard or guideline, they will make every reasonable attempt to ensure that no patented, patentable, or copyrighted elements are included in OAGI materials. OAGI requires that Members, observers or any other interested parties exercise reasonable efforts in bringing to its attention any copyrights, patents or patent applications, or other proprietary rights which may cover technology that may be required to use or implement any proposed standard or guideline.

Copyright. The participant grants Open Application Group Inc a non-exclusive, perpetual, irrevocable royalty-free license under the participant's copyright rights in the contribution to reproduce, distribute, perform, display and create derivative works of the contribution, solely for the purpose of creating, implementing and promoting Open Application Group Inc's e-business process specifications. Open Application Group Inc may sublicense its rights as necessary to advance this purpose.

If an above defined contribution is incorporated into a published final Open Application Group Inc specification, then the participant agrees that it will grant to any third party implementing such specification, on royalty-free and otherwise reasonable and non-discriminatory terms, a non-exclusive, non-transferable, world-wide license under any Necessary Claim that reads on such contribution to make, have made, import, sell and offer to sell those portions of specification-compliant products that implement the contribution. License terms may include but are not limited to:

(i) conditioning the license on a grant of a reciprocal royalty free license to all Necessary Claims owned or controlled by the licensee

(ii) revocation of the license should a suit for patent infringement be brought by licensee against the licensor

(iii) a requirement that an implementer manifests an intent to accept the terms of the royalty-free license as offered by the licensor within a reasonable period of time

Participant IP other than the above defined contributions. If an individual participant in Open Application Group Inc becomes aware that the member on whose behalf the individual participant is acting owns or controls intellectual property that would, in the opinion of the individual participant, necessarily be infringed in the course of implementing or using a Open Application Group Inc published or draft specification, for a working group that this individual participant is not a part of, (excluding intellectual property that has been contributed in accordance with this Policy) then the individual participant or the member must alert the Open Application Group Inc President to this fact...

Mechanism for accepting royalty-bearing IP. It is not the intention of the OAGI to pursue technology requiring the payment of a royalty. If such a need should arise, the OAGI President will make a recommendation to the OAGI Policy Board.

Note: The Open GIS Consortium changed its name to the Open Geospatial Consortium in September 2004; references to 'OpenGIS' are retained below.

On June 09, 2003 the Open GIS Consortium announced the adoption of a revised IPR policy which requires all contributors to license technology on a royalty-free basis. OGC is an international industry consortium of 257 companies, government agencies, and universities participating in a consensus process to develop publicly available geo-processing specifications based upon XML. The OGC's revised IPR policy "takes into account the significant patent policy work undertaken at the W3C, which has emerged as the consortium leader in establishing a pragmatic way to successfully develop royalty-free Web Standards in the current patent environment. The result reflects agreement with the basic goal to preserve a free and open standards-based information infrastructure. At the same time, the new IPR policy respects the patent rights of member organizations and the value their patents represent." OGC members support the IPR policy "because there is a belief that OpenGIS specifications must be royalty free and unencumbered by patents, and therefore freely available to any party -- buyer, commercial developer, government agency, or open source developer -- that wants to implement OpenGIS Specifications in their enterprise." The OGC's revised IPR policy will take effect on July 05, 2003.

[This entry under revision as a news story for the 2005 Revised OASIS IPR Policy is being written, to be published on the Cover Pages.]

The first IPR Policy adopted by OASIS in early 2000 was essentially a copy of licensing terms in the then-current IETF RFC 2026.

On February 7, 2005 OASIS announced the publication of a new IPR Policy (approved by the Board on January 20, 2005) and new IPR Transition Policy, both to become effective 15-April-2005. These documents were said to "represent almost three years" of revision effort by the OASIS Board. This revised IPR policy makes provision for OASIS Technical Committees to operate in one of three IPR Modes: Reasonable and Non-Discriminatory (RAND) IPR Mode, Royalty-Free (RF) on RAND Terms IPR Mode, RF on Limited Terms IPR Mode. Individual TCs select the IPR Mode they wish, and individual TC members who join a TC as a (directly) active participant agree to license any relevant essential claims under the terms of the TC's IPR Mode. Individuals who wish to participate only indirectly (as Observers) but not vote are not subject to the disclosure, contribution, and participation obligations of that TC, as are the voting Members of the TC; disclosure and licensing obligations are binding only upon companies or individuals who directly participate in a given TC.

The licensing terms described in the three IPR Modes represent just the baseline obligations under which a patent holder is required to grant a license to some party that makes a request for a license; a patent holder may make private arrangements with any other party (e.g., through a cross-licensing or patent pool agreement); "alternative terms may be substituted, if agreed to by both the patent holder and the implementer."

Note: OASIS specifications and Standards produced by TCs operating under one of the "RF" IPR Modes are not guaranteed to be "royalty free." Why not? (1) OASIS members who choose not join a particular TC, or who elect to join/participate only indirectly as Observers, may indeed have patents (perhaps disclosed, perhaps undisclosed) that read on the "RF" TC's specifications. (2) An "RF" IPR Mode TC may have transitioned to "RF" from the older ("Legacy") OASIS RAND IPR Policy, and have specifications which are legally uncumbered under IPR declarations made earlier. (3) A TC operating in an "RF" mode is not obligated to produce only royalty-free specifications, as the terms only bind the TC Members to license their own patented technology under RF terms. In other words, one must read the fine print to know whether specifications and standards associated with an "RF" IPR Mode TC are actually royalty free.

Royalty-free" licensing is not of itself adequate for (most) open source implementation environments if the patent license, to be granted upon request, contains other terms incompatible with open source (development, licensing, distribution) models. For example, an OASIS Intellectual Property Rights (IPR) Policy of 2005-04-15, applicable to some OASIS Technical Committees, provides IPR Modes for "Royalty-Free (RF) on RAND Terms" and "RF on Limited Terms." Both IPR Modes provide that an Obligated Party (patent owner) may require negotiation of an explicit executable license, with non-sublicensable patent license terms, and the license "may include reasonable, customary terms relating to operation or maintenance of the license relationship." Such license terms may or may not be acceptable to open source software developers.

OASIS says it elected to support RAND licensing for OASIS Standards as well as RF licensing (RF on RAND Terms, RF on Limited Terms) for the following reasons: (1) "The OASIS IPR Policy seeks to create the greatest possible incentive for patent holders to participate productively in an open standards process, responsibly disclose their interests, and make available, without prejudice, licenses for any essential claims they may have" [FAQ document]; (2) "To completely eliminate RAND as an option [...] would deny those OASIS members who choose to work under those terms their current rights." [OASIS-OSS memo]

[June 2006] According to documents prepared for the UN/CEFACT Twelfth Session (22-24 May 20069, Salle XI, Palais des Nations, Geneva), Agenda Item 12: Organizational Matters, the UN Office of Legal Affairs (UN OLA) approved an Intellectual Property Rights Policy in May 2006 which requires "all Participants in a UN/CEFACT Forum Group to waive their rights to enforce any of their intellectual property ('IPR') that would be necessary to implement or use a Specification developed in [a] Forum Group ('Essential IPR')."

UN/CEFACT Open Development Process (TRADE/R.650/Rev.4/Add.1). 17 May 2006. 13 pages. "The UN/CEFACT Open Development Process is open for anyone to provide comments at certain stages in the process. The resulting Standards and Recommendations must be open as well. That means: free of any constraints or restrictions associated with intellectual property rights (IPR)... Anyone should be able to produce a complete implementation of the specifications described by the UN/CEFACT Standards or advocated by the UN Recommendations without IPR related cost or red tape..." [cache]

Executive Summary of the UN/CEFACT Intellectual Property Rights Policy (ECE/TRADE/CEFACT/2006/11/Add.1). 17 May 2006. Twelfth session, Geneva, 22-24 May 2006. 3 pages. "The UN/CEFACT IPR Policy ('Policy') is designed to promote the goal of enabling the implementation of UN/CEFACT Specifications without the burden of fees or restrictions. The Policy promotes this goal by requiring all Participants in a UN/CEFACT Forum Group to waive their rights to enforce any of their intellectual property ('IPR') that would be necessary to implement or use a Specification developed in that Forum Group ('Essential IPR')..." [cache]

UN/CEFACT Intellectual Property Rights Policy (ECE/TRADE/CEFACT/2006/11). 17 May 2006. With presentation by the UN/CEFACT Bureau. "Subject to Section 3(b), as a condition of participating in UN/CEFACT, each Participant agrees to waive its rights to enforce its Essential IPR against any party implementing a Specification from any Forum Group of which Participant was a member or made a Contribution. The Participant's waiver of its rights to enforce Essential IPR against any party implementing the Specification extends only to the actual implementation of the Specification..." [cache IPR Policy, cache Presentation]

[June 23, 2005] UN/CEFACT document 'TRADE/CEFACT/2005/MISC.7' was published June 23, 2005 as "Decisions Made at the 11th UN/CEFACT Plenary Session Held at the Palais Des Nations 22 and 23 June 2005." Item 6, UN/CEFACT Intellectual Property Rights, Decision 05-12: "The principles of the Intellectual Property Rights Policy were approved as laid down in document TRADE/CEFACT/2005/MISC.3. The Special Contact Group, in cooperation with the Bureau, was requested to prepare a document that the secretariat can clear with the UN Office of Legal Affairs. The IPR policy should be approved in an intersessional approval process by the end of 2005. The Delegations of Canada and Sweden reserved the right to submit comments later and they were requested to do so within three weeks after the Plenary to expedite the finalization process..."

[June 09, 2005] The UN/CEFACT Special Contact Group for Intellectual Property Rights Policy (IPR SCG) has produced a number of working drafts for an IPR Policy that's now [2005-06] looking very much like the W3C Patent Policy. A 2005-05-28 note from the IPR SCG summarizes the policy goals and strategy: "The draft UN/CEFACT IPR Policy ('Policy') is designed to promote the goal of enabling the implementation of UN/CEFACT Specifications without the burden of fees or restrictions. The Policy promotes this goal by requiring all participants in a UN/CEFACT Forum Group to waive their rights to enforce any of their intellectual property ('IPR') that would be necessary to implement a final technical specification developed in that Forum Group ('Essential IPR')."

A 2002-10-30 posting from Klaus-Dieter Naujok references a document containing the "Provisonal UN/CEFACT Intellectual Property Policy." Status: "The CSG reviewed the draft version 1.2 of the IPR policy which had been recommended to it by one of the Legal Rapporteurs, Mr David Marsh, and his colleagues. The CSG unanimously approved the document and adopted it as their policy. Therefore, this becomes the provisional policy of UN/CEFACT. The next steps will be to forward the document to the Heads of Delegation with the request for an intersessional approval. In the meantime, the provisional policy will be distributed as widely as possible through all channels available to UN/CEFACT including its website, list servers and the FCT." Please see the full context for the definitions of "Participant," "Contribution," and other key terms. From Section 4, 'Use of Contributions':

Copyright. The Participant grants UN/CEFACT a non-exclusive, perpetual, irrevocable royalty-free license under the Participant's copyright rights in the Contribution to reproduce, distribute, perform, display and create derivative works of the Contribution, solely for the purpose of creating, implementing, and promoting Specifications. UN/CEFACT may sublicense these rights to implementers of Specifications, or otherwise, as necessary to advance this purpose.

Patents. A Participant agrees that it will grant to any third party implementing a published final Specification that incorporates a Contribution from such Participant, on royalty-free and otherwise reasonable and nondiscriminatory terms, a non-exclusive, non-transferable, world-wide license under any Necessary Claim that reads on such Contribution to use, make, have made, import, sell and offer to sell, lease, and otherwise distribute and dispose of those portions of Specification-compliant products that implement such Contribution. License terms may include but are not limited to: (1) conditioning the license on a grant of a reciprocal royalty-free license to all Necessary Claims owned or controlled by the licensee and/or its Affiliates that would necessarily be infringed by implementation of the applicable Specification; (2) revocation of the license should a suit for patent infringement be brought by licensee against the licensor; (3) a requirement that an implementer manifests an intent to accept the terms of the royalty-free license as offered by the licensor within a reasonable period of time; and (4) a prohibition on sublicensing.

"Draft Intellectual Property Rights Policy for UN/CEFACT." United Nations Centre for Trade Facilitation and Electronic Business (UN/CEFACT). June 17, 2005. Reference identifier: TRADE/CEFACT/2005/MISC.3. Submitted by the Bureau. This draft document is for information under agenda item 6 of the provisional agenda. The document is circulated for review and comments by the Special Contact Group set by the Bureau. [source PDF]

W3C Patent Policy. Edited by Daniel J. Weitzner (W3C/MIT). 5-February -004. Version URL: http://www.w3.org/Consortium/Patent-Policy-20040205/. Latest version URL: http://www.w3.org/Consortium/Patent-Policy/. Previous version URL: http://www.w3.org/Consortium/Patent-Policy-20030520.html. "In order to promote the widest adoption of Web standards, W3C seeks to issue Recommendations that can be implemented on a Royalty-Free (RF) basis. Subject to the conditions of this policy, W3C will not approve a Recommendation if it is aware that Essential Claims exist which are not available on Royalty-Free terms. To this end, Working Group charters will include a reference to this policy and a requirement that specifications produced by the Working Group will be implementable on an RF basis, to the best ability of the Working Group and the Consortium." See also the news item explaining W3C's publication of a "new version of the Process Document to align with the Patent Policy, which was approved in May 2003. Among the changes are clarifications for Technical Architecture Group (TAG) and Advisory Board participation, and for the definitions of "consensus" and "First Public Working Draft." W3C has adopted a transition procedure as part of implementing the patent policy." See "World Wide Web Consortium Process Document," 5-February-2004: "The W3C Process Document describes the organizational structure of the W3C and the processes related to the responsibilities and functions they exercise to enable W3C to accomplish its mission. This document does not describe the internal workings of the Team or W3C's public communication mechanisms."

[May 20, 2003]W3C Approves Patent Policy Supporting Development of Royalty-Free Web Standards. Congratulations to the W3C Patent Policy Working Group, W3C Membership, and W3C leadership for the landmark achievement represented by final approval of the W3C Patent Policy. The policy governs the handling of patents in the process of producing Web standards; its goal is to assure "that Recommendations produced under this policy can be implemented on a Royalty-Free (RF) basis. Subject to the conditions of the policy, W3C will not approve a Recommendation if it is aware that Essential Claims exist which are not available on Royalty-Free terms. To this end, Working Group charters will include a reference to this policy and a requirement that specifications produced by the Working Group will be implementable on an RF basis, to the best ability of the Working Group and the Consortium. The policy also requires patent disclosure by W3C Members when they are aware of patents that may be essential to the implementation of W3C Recommendations." A published statement from W3C Director Tim Berners-Lee notes that the W3C Patent Policy "coincides almost exactly with the tenth anniversary of CERN's decision to provide unencumbered access to the basic Web protocols and software developed there, even before the creation of W3C... The Patent Policy represents what may be the most thorough effort to date in defining a basic patent policy for standard-setting [and] sets the benchmark for the pragmatic way to successfully develop royalty-free Web Standards in the current patent environment." The W3C Patent Policy Working Group (PPWG) "is part of the W3C Technology and Society Domain; its mission is to advise W3C on the means to address the growing challenge that patent claims pose to the development of open standards for the Web."

[March 19, 2003]W3C Releases Proposed Royalty-Free Patent Policy for Review. The W3C has issued Patent Policy Working Group Royalty-Free Patent Policy as a W3C Proposed Policy and invites public comment through 30-April-2003. "The W3C Director's decision on the final policy, which takes into account the full range of feedback, is expected in May 2003." The W3C Royalty-Free Patent Policy "governs the handling of patents in the process of producing Web standards. The goal of this policy is to assure that Recommendations produced under this policy can be implemented on a Royalty-Free (RF) basis. The Patent Policy Working Group (PPWG) is part of the W3C Technology and Society Domain; its mission is to advise W3C on the means to address the growing challenge that patent claims pose to the development of open standards for the Web." Paraphrasing the key terms of the Proposed Policy: those participating in the development of a W3C Recommendation must agree to license essential claims (viz., patents that block interoperability) on a royalty-free (RF) basis. WG participants may exclude specifically identified patent claims from the Royalty-Free commitment; these exclusions are required shortly after publication of the first public Working Draft, reducing the likelihood that surprise patents will jeopardize collective Working Group efforts. Patent disclosures regarding essential patents are required from W3C Members and requested of anyone else. Patent claims not available with terms consistent with the W3C Patent Policy will be handled by a dispute resolution process.

W3C is one of several standards bodies currently [2002] examining its patent policies with respect to published standards. The Worldwide Web Consortium has established a Patent Policy Working Group, which has released several working draft documents, including a Patent Policy Working Group Royalty-Free Patent Policy (W3C Working Draft 14-November-2002). See also the 2002-02-26 Patent Policy Working Group Royalty-Free Patent Policy, superseding the W3C Patent Policy Framework working draft of August 16, 2001. The story is still unfolding [2002-07], but the draft Royalty-Free patent policy documents address "a large number of issues raised by comments from W3C Members and the general public." According to the statement of 'Licensing Goals for W3C Recommendations' articulated in the 14-November-2002 working draft: "In order to promote the widest adoption of Web standards, W3C seeks to issue Recommendations that can be implemented on a Royalty-Free (RF) basis. Under this policy, W3C will not approve a Recommendation if it is aware that Essential Claims exist which are not available on Royalty-Free terms. To this end, Working Group charters will include W3C RF licensing requirements that specifications produced by the Working Group will be implementable on an RF basis, to the best ability of the Working Group and the Consortium."

One of the significant changes in the 2002-11-14 and 2002-02-26 WDs (relative to the 16-August-2001 Last Call draft) relates to the W3C's position on RAND licensing. Under the terms of the 2001-08 document, a preference was confirmed for W3C Recommendations that can be implemented on a royalty-free (RF) basis, but allowing, where RF is not possible, "a framework to assure maximum possible openness based on reasonable, non-discriminatory (RAND) licensing terms." In response to public comments, the RAND track has now been dropped. Comments have expressed concern that RAND-encumbered specifications would not be implemented and that RAND would lead to discrimination and fragmentation (e.g., RAND would hurt open source developers, would discriminate against the poor, would stifle innovation and reduce choice, would harm end users as well as developers, universal access and RAND are incompatible; patents and standards are incompatible, etc.). A number of issues remain to be resolved in the W3C patent policy.

From the W3C announcement: "The new Patent Policy Working Draft differs from the previous draft in three significant ways:

The RAND track for W3C Working Groups has been removed. There is no process in this policy for developing RAND specifications. However, the Working Group has an open question on options for accommodating RAND technologies in exceptional circumstances.

Working Group Participants must now commit to Royalty-Free Licensing.

Defensive use of patents is allowed only in the case where a holder of essential claims is sued for patent infringement in the implementation of a W3C Recommendation.

Consistent with the goal of promoting the "widest adoption of Web standards, W3C seeks to issue Recommendations that can be implemented on a Royalty-Free (RF) basis. Under this policy, W3C will not approve a Recommendation if it is aware that Essential Claims exist which are not available on Royalty-Free terms. To this end, RF Working Group charters will include as a requirement that the specification produced by the Working Group will be implementable on an RF basis, to the best ability of the Working Group and the Consortium." [from the WD]

Excerpts from the text of the testimony of Daniel Weitzner "Before the United States Department of Justice and United States Federal Trade Commission Joint Hearings on Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy: Standards and Intellectual Property: Licensing Terms":

"I am the head of the World Wide Web Consortium's (W3C) Technology and Society activities, responsible for development of technology standards that enable the Web to address social, legal, and public policy concerns... My goal is to contribute to the factual basis of your inquiry into antitrust, intellectual property and technical standards by providing an overview of the experience that the World Wide Web community has had with patents over the last four years."

"This testimony will highlight three main points: (1) First, the Web itself has been possible only in the context of open, royalty-free (RF) standards. (2) Second, the 'reasonable, non-discriminatory terms' (RAND) licensing model common in many traditional standards bodies is unlikely to be accepted in the Web environment. (3) Third, W3C is working hard to develop a Royalty-Free patent policy that encourages the continued evolution of the Web as a universal information space, while respecting our Member's legitimate intellectual property rights..."

"Of critical importance to the rise of electronic commerce as a new marketplace, Web technology allows a wide variety of new systems and technologies to be built on top of the basic architecture of the Web, thus enabling continual innovation in the design of Web-based applications and services. Two key attributes of Web standards are responsible for the ubiquity and flexibility of the Web: 1) simple, extensible design, and 2) open, unencumbered standards... Whether patents and claims related to W3C technologies are in fact valid or not, the risk of costly, time-consuming litigation and possible limitations on use by the right holders, is sufficient to suffocate much of the dynamic development activity that has been driving the Web industry..."

"The strongest reaction [to the W3C Patent Policy Working Group's first proposal] came from various communities of open source developers who declared, (in several thousand emails sent to the W3C public comment mailing list) that a RAND approach would cause open source developers to stop using W3C web standards, impel some to form alternate Web standards, thus balkanizing the Web, and overall constituted a take-over of the Web by large corporate interests..." [emph added]

"W3C [has] responded to input from W3C Members and the public by adding invited experts to the Patent Policy Working Group to represent the Open Source community, creating a task force within the Patent Policy Working Group to examine how to accommodate the Open Source community, and creating a public home page for the PPWG, publishing public meeting records, and committing to additional public drafts of the framework before the policy was finalized."

"Based on input from a meeting the W3C Members, the Patent Policy Working Group recently issued a draft royalty free policy. The main features of this policy are: (1) RF licensing goals for W3C Recommendations; (2) RF licensing obligations that Working Group participants will undertake as a condition of Working Group membership, along with means of excluding specific patents from those obligations; (3) the definition of a Royalty-Free license; (4) disclosure rules for W3C Members; (5) an exception handling process for situations in which the Royalty-Free status of a specification comes under question..."

Public Issues for Patent Policy Framework of 20010816. This document presents a summary of public comments on the 16-August-2001 W3C Patent Policy Framework, Last Call Working Draft; it classifies many of the "several thousand emails" sent to W3C according to concerns about RAND most often expressed by the reviewers.

"Standards Stalled Over Royalty Disputes." By Paul Festa and Stephen Shankland. In ZDNN (July 11, 2002). ['A key Web standards body is bracing for a vote next week that could decide once and for all how it will handle patented technology that comes with royalties attached.']

Individuals who put their own economic and political interests at risk for the sake of needed social change should be honored -- not as heroes, priests, or High Priests but as leaders. Though some will be recognized publicly, 99% are not, because they serve as the annoying, uncomfortable conscience in their workplaces and communities.

I'm not sure who to list here, but I know it takes individual acts of courage to stand against the status quo when it comes to serve the wrong interests. For now, I list three activists who deserve respect. Activists are easy targets for writers locked into the status quo (paid by beneficiaries of the status quo) who are compelled to discredit new ideas that challenge the ruling mindset: activists can be attacked ad hominem for their elevated rhetorical style and unqualified characterizations; they are easily labeled as extremists, paranoiacs, conspiracy theorists, anarchists, or whatever. Thoughtful people are not influenced by such labels.

1. Lawrence Lessig. Lawrence Lessig (Professor of Law, Stanford Law School) has written a thoughtful commentary in The Future of Ideas: The Fate of The Commons in a Connected World (Random House, 2001). The treatment of patents (pages 205-215) is not central to the book, but illustrates underlying dynamics that are documented fully in the book's 365 pages. Lessig writes on the "future of innovation in a time when commercial and governmental interests are exercising their control over plumbing, software, content, and patent laws to impede competition." He shows how legal and technological changes taking place in the Internet commons are creating a shift which [unchecked] "will destroy the opportunities for creativity and innovation that the Internet originally engendered. The cultural dinosaurs of our recent past are moving to quickly remake cyberspace so that they can better protect their interests against the future. Powerful conglomerates are swiftly using both law and technology to 'tame' the Internet, transforming it from an open forum for ideas into nothing more than cable television on speed. Innovation, once again, will be directed from the top down, increasingly controlled by owners of the networks, holders of the largest patent portfolios, and, most invidiously, hoarders of copyrights." See also the book reviews. Lessig's article "The Problem With Patents" [1999] identifies some critical concerns relative to "IP mania." See also Lessig's arguments from the transcript of an "Internet Society Panel on Business Method Patents," and a shorter report.

3. Richard Stallman. Stallman is a political activist in several arenas, but is famous mostly for his pioneering work on open source licensing and 'copyleft' principles. An extremist by almost any definition, but history is likely to judge him as more important than most who (without any risk) criticize him for his extremism. Richard Stallman "founded the GNU Project in 1984 and is the principal or initial author of GNU Emacs, the GNU C Compiler, the GNU Debugger GDB and parts of other packages. He is the President of the Free Software Foundation (FSF)." See sample articles on patents referenced below: "Stallman: 'Patent licenses discriminate'," and "The Danger of Software Patents."

4. Others. Who else? There are no heroes -- just good people with conviction, clarity of vision, and courage to take the ideal road against the easier road named "Pragmatism." So others, not "activists" but technology experts concerned about an open Internet, might be added to the list. They won't be just now, as I don't welcome an overflowing mailbox full of requests to be removed from the list. Were I to add them as official supporters of the "open Internet" here defined, such names might include: Philippe Aigrain (Head of Sector 'Software Technologies', European Commission DG INFSO/E2 Office N105 3/54); Jim Bell (Hewlett-Packard); Tim Berners-Lee (W3C); Christopher Blizzard (for Mozilla.org); Jonathan Borden, M.D. (Chair, ASTM E31.25 XML Healthcare Schemas); Jon Bosak (Sun Microsystems); Tim Bray (CEO, Antarcti.ca Systems); Steven Champeon (for the Web Standards Project); James Clark (Thai Open Source Software Center); Eduardo Gutentag (Sun Microsystems); Renato Iannella (IPR Systems); Rick Jelliffe (C.T.O. Topologi Pty. Ltd., Sydney, Australia); Mitch Kapor; Chris Lilley (W3C); James Mason (ISO/IEC JTC1/SC34 Chairman); John Nagle (Inventor, Nagle Algorithm); Michael Rose (Center for Tele-Information, Technical University of Denmark); Pamela Samuelson (University of California, Berkeley); Lauren Wood (SoftQuad Software). Informally, one could claim that the published responses of these individuals to the W3C's early draft [RAND] formulation are indeed representative of the overwhelming negative assessment of [RAND] royalty-bearing patents in connection with W3C standards, mutatis mutandis in connection with any standards foundational to the Internet infrastructure. The reader should inspect the email logs and summary of public comments to verify or falsify this claim. Note: It takes some courage to stand up to bad policy, especially if the bad policy is being formulated and enforced by the legal department of the company that employs you. "It takes a lot of courage to stand up to your enemies, but even more to stand up to your friends."

Introduction: According to narratives from ancient as well as modern times, bridge trolls take up residence under the bridge of a well-trafficked road and demand payment from any who would pass: 'Your money or your life.' Note that the trolls themselves do not build or maintain the bridges, nor the roads. They merely set up toll booths at the bridges needed by everyone. This is an analogy: the new information highway is an elaborate system of roads. But we mean "roads" in the abstract: spectrum, wires, switches, routers, optical cables, set-top boxes, and the code which is used to transport information packets on their way from origin to destination; the code also labels and structures the messages sent in collections of packets. To convey the wagon or carriage, the carts, and young children across the bridge, the citizens need free passage and security -- protection from trolls and their tolls. What does this mean in the modern context: no tax on identity, privacy, rights, preferences, or sniffed-out-payload-type. Think: TCP/IP, a packet-is-a-packet; end-to-end transport; the middlemen collect no tolls on the use of core technologies; the code and the roads remain open to the public; uninspected and untaxed.

The following examples provide representative case studies of IP claims upon Internet technologies. They reveal some of the current tension between laws that protect intellectual property on the one hand, and the principle of unimpeded, equal access on the other. They illustrate how the public responds to patent claims that are (arguably) overreaching and/or inappropriately interjected into Internet standards space -- where there are no realistic competitive alternatives, making the patent-monopoly detrimental to the public good.

Many of the incidents reported below take a similar course: "A company asserts patents/royalties on a(n emerging) standard previously understood by everyone else to be legally unencumbered; the public screams 'outrage!' with threats to abandon the standards effort, declaring the newly-revealed legal assertion a show-stopper; facing a publicity nightmare, the company scrambles to backpedal, oopsie-daisy..."

The following examples can serve as reminders that a badly broken [US] patent system will indeed be exploited by legal departments even when the chances of winning are exceedingly small. The habit of lawyers ("grab 110% of everything up front; force the other party to fight to dislodge the terms, clause by clause; if they don't read the fine print, we get total control") should be made more costly for the offending company than it currently is, in both economic and political terms. Some of the examples below illustrate the political cost to a company allowing its legal team to use patents in a way that violates a public sense of propriety.

By one estimate, it costs [at least] 1.5 million dollars to settle a patent infringement lawsuit, even if the PTO has made a mistake in awarding the patent. A solution less expensive than using the courts involves rallying the resources of the public -- to help collect evidence against the claims of the offending company.

When the courts are unable or unwilling to intervene so as to protect consensual public norms against inappropriate claims, the public typically must resort to social activism, bringing sanctions to bear against the offending company sufficient to make it reconsider the costs. So in the case of companies that allow their legal departments to menace the public with unsustainable patents, the public will vilify, anathematize, ridicule, scorn, (urge) boycott, and otherwise seek to make the company suffer politically/economically -- because such menace constitutes too great an expense for the public to bear. This would apply (if at all) to only some of the "case studies" listed below.

Rambus Inc.'s claims to patent royalties on Double Data Rate (DDR) memory and on synchronous dynamic random access memory (SDRAM) moved Hitachi and Toshiba [2000] to settle, leading to alarm that the entire memory industry would be in debt to Rambus for similar royalties. On June 19, 2002, the FTC came back against Rambus with charges [Rambus Incorporated, File No. 011 0017, Docket No. 9302] that it had abused the standards process: "The Commission challenges a pattern of anticompetitive acts and practices, undertaken by Rambus over the course of the past decade, and continuing even today, whereby Rambus, through deliberate and intentional means, has illegally monopolized, attempted to monopolize, or otherwise engaged in unfair methods of competition in certain markets relating to technological features necessary for the design and manufacture of a common form of digital computer memory, known as dynamic random access memory, or 'DRAM'... Rambus's anticompetitive scheme involved participating in the work of an industry standard-setting organization, known as JEDEC, without making it known to JEDEC or to its members that Rambus was actively working to develop, and did in fact possess, a patent and several pending patent applications that involved specific technologies proposed for and ultimately adopted in the relevant standards. By concealing this information - in violation of JEDEC's own operating rules and procedures - and through other bad-faith, deceptive conduct, Rambus purposefully sought to and did convey to JEDEC the materially false and misleading impression that it possessed no relevant intellectual property rights. Rambus's anticompetitive scheme further entailed perfecting its patent rights over these same technologies and then, once the standards had become widely adopted within the DRAM industry, enforcing such patents worldwide against companies manufacturing memory products in compliance with the standards..." See the Administrative Complaint and the news release.

References:

[June 19, 2002] FTC Issues Complaint Against Rambus, Inc. Deception of Standard-Setting Organization Violated Federal Law." - "... In developing standards for use throughout the semiconductor industry, JEDEC has endeavored to promote free competition among industry participants. As the FTC's complaint notes, one of JEDEC's 'basic' rules is that standardization programs conducted by the organization 'shall not be proposed for or indirectly result in -- restricting competition, giving a competitive advantage to any manufacturer, [or] excluding competitors from the market.' The complaint notes that 'JEDEC also has maintained a commitment to avoid, where possible, the incorporation of patented technologies into its published standards, or at a minimum to ensure that such technologies, if incorporated, will be available to be licensed on royalty-free or otherwise reasonable and non-discriminatory terms.' 'Toward this end,' the complaint states, 'JEDEC has implemented procedures designed to ensure that members disclose any patents, or pending patent applications, involving the standard-setting work being undertaken by the organization.' According to the FTC's complaint, Rambus participated in JEDEC's SDRAM-related work for more than four years without ever making it known to JEDEC or its members that Rambus was actively working to develop, and did in fact possess, a patent and several pending patent applications that involved specific technologies proposed for, and ultimately adopted in, the relevant standards..."

[June 19, 2002] "FTC Filing Lawsuit Against Rambus. Charging firm with improperly patenting key chip technology." AP/MSBNC June 19, 2002. "The Federal Trade Commission said Wednesday it will file antitrust charges against computer memory-maker Rambus Inc. The case would enforce new rules requiring organizations that establish emerging technology standards to disclose any related patent applications. Commissioners voted 5-0 to file charges against Rambus, based in Los Altos, Calif. Industry rivals, along with some customers, have alleged that Rambus deceptively persuaded a nonprofit standards group to adopt technology for which Rambus quietly was seeking patent approvals... The FTC said Rambus worked with the standards group, called the Joint Electron Device Engineering Council, for four years without ever disclosing its patents. After the Rambus technology was broadly accepted, Rambus assessed unusually high royalty fees -- roughly three times the industry average -- for its computer memory designs, which are used in personal computers, video games and other electronics..."

[June 19, 2002] Rambus Target of FTC Antitrust Suit." By Michael Kanellos. In CNET News.com (June 19, 2002). "The [US] Federal Trade Commission filed an antitrust suit against Rambus on Wednesday, alleging that the controversial memory-chip designer deliberately deceived the industry by not disclosing its patent plans to a standards body. The FTC, which voted 5-0 to file the lawsuit, alleges that Rambus violated antitrust laws by deliberately not disclosing key patent applications, among other acts, while it was a member of the JEDEC Solid State Technology Association (formerly known as the Joint Electron Device Engineering Council). JEDEC's bylaws required members to disclose or license relevant intellectual property to other members..."

[June 16, 2000] "Rambus Soars on Analyst Upgrade, Toshiba Deal." By Ian Fried. In CNET News.com (June 16, 2000). "Shares of memory chip company Rambus soared today after a brokerage upgraded the stock and Toshiba agreed to license the company's patents for use in standard memory. At the close of regular trading, Rambus was up $26.69, or 46 percent, to $83.38 on a volume of 64 million shares...The Toshiba deal is potentially significant in that it could lend credence to a theory proposed by Rambus that nearly the entire memory industry owes the company royalties..."

An announcement from MediaBay in August 2002 announced that the company had acquired rights to the 'Freeny Patent' and that the it would vigorously pursue collection of royalty payments from infringers. According to the summary by Calvin Reid (below): "E-Data claims that this patent gives it an exclusive 'field of use license' for spoken audio, e-book and print-on-demand transmissions over the Internet -- in other words, if you sell downloadable content you probably owe E-Data a licensing fee -- even though the patent was granted years before the Internet became a reality..."

[September 17, 2002] "MediaBay Acquires Rights To Freeny Patent In Various Markets - Expected To Increase Earnings Company to Vigorously Pursue Collection of Royalty Payments from Infringers Settlements Previously Made by Licensor with Adobe, Waldenbooks and Broderbund." A MediaBay Press release. August 01, 2002. "MediaBay, Inc., a leading media company specializing in spoken audio content, marketing and publishing, announced today that it has obtained an 'Exclusive Field of Use License' to the Freeny Patent in the spoken audio, E-book and print-on-demand markets from E-Data Corporation (OTC: EDTA - News) in the U.S. with corresponding Canadian, U.K. and European patents. The license also enables MediaBay, in certain instances, to pursue infringers of the Freeny Patent in related fields, including the music download market. E-Data owns U.S. Patent No. 4,528,643 known as the 'Freeny Patent,' entitled 'System for Reproducing Information in Material Objects at a Point of Sale Location,' and corresponding Canadian, UK and European patents. The Freeny patent covers a specific system and method of distributing information over electronic and wireless networks and systems... Under the terms of the license agreement, MediaBay has the exclusive right to use the patent in the spoken word audio, print-on-demand and E-book markets. The license covers the life of the patent in its respective territories and assigns to MediaBay the right to claims for accrued, current and future royalties, profits and damages arising from infringement in the markets... Norton Herrick, Chairman of MediaBay, commented, 'Having an exclusive license means that we are now the only company that can legally offer downloads of spoken audio products and E-books for sale and transfer to a mobile device or storage media using this method. We intend to vigorously defend the use of the patent and pursue the collection of royalty payments from infringers..." [Announcement originally at: http://biz.yahoo.com/prnews/020801/nyth054_1.html]

Posting 2002-09-17 from Nick Bogaty (Executive Director, Open eBook Forum/OeBF) to OeBF Members with "Subject: Notice to members of potential patent infringement claims." -- "A function of our organization is to keep our members advised of developments in the eBook industry that affect our mission. It has come to the attention of the Open eBook Forum that patent infringement claims are being asserted against several of our member companies that engage in eBook commerce. MediaBay.com, Inc. (NASDAQ:MBAY) is asserting that it has obtained an exclusive field of use license to the "Freeny" patent (U.S. Patent No. 4,528,643). They have made public statements that "...we are now the only company that can legally offer downloads of spoken audio products and E-books for sale and transfer to a mobile device or storage media using this method." [...] While the Open eBook Forum does not and will not offer legal advice to any of our members or others regarding this or any matter, we do intend to assemble relevant facts and resources for our membership and the eBook industry at large. We have already learned of recent court decisions that limit the extent of these claims and also believe that the US Patent is scheduled to expire early next year. We are working to collect relevant data and have it available from the OeBF website in the near future..."

"Does Freeny Patent Make E-Data Download King?" By Calvin Reid. In Publishers Weekly (September 09, 2002). "You may never have heard of the Freeny patent or a company called E-Data, but stay tuned. Last month, MediaBay announced it had acquired the rights to the Freeny patent, a controversial and much-litigated patent claim that covers a specific system for distributing content over electronic networks. U.S. Patent 4,528,643, "a system for reproducing information in material objects at a point of sale location" according to the patent information, was granted back in 1985 to inventor Charles R. Freeny. It is the sole asset of a company called E-Data, originally known as Interactive Gift Express, which bought the patent in 1994 with the intention of exploiting its licensing potential... E-Data claims that this patent gives it an exclusive "field of use license" for spoken audio, e-book and print-on-demand transmissions over the Internet -- in other words, if you sell downloadable content you probably owe E-Data a licensing fee -- even though the patent was granted years before the Internet became a reality. And while the patent will expire in 2003, the current defendants and any others found to be infringing prior to expiration could still be held financially liable... A number of e-vendors contacted by PW dismissed E-Data's patent claims, but some major companies, among them Adobe, Waldenbooks, IBM and Broderbund, have settled with E-Data and licensed the right to use its patent... The E-Data patent outlines a system that transmits content to a network of remote "point of sale locations," each with an "information manufacturing machine" that copies the content onto a "material object" that the consumer can then buy. But while the trial court rejected E-Data's definition of terms such as "point of sale location" and "information manufacturing machine," the appellate court ruled that the trial judge had misinterpreted the terms. Now the case has been remanded to the district for reconsideration and the trial continues... Steve Potash is president of the Open E-Book Forum, and also president of OverDrive, an e-wholesaler that supplies online infrastructure to retail clients -- a company that very likely would be in violation if the court rules in E-Data's favor. He told PW, "It is sad and unfortunate that a company that has no vested interest in this business is trying to extend a patent from the 1980s into the Internet era using scare tactics. It is unhealthy, and we expect that the issue will be resolved in the courts'..."

[November 25, 2002] "... the [IBM] patent [#6,148,290] covers features that might be essential to the implementation of a wide variety of ecommerce systems, not just ebXML. It's significant, therefore, that in May 2002, IBM promised to grant royalty-free licenses to all IBM patents required by CPPA v1 and v2 and committed to continue providing RF licenses for subsequent versions of CPPA. [See:] REF-1, REF-2, REF-3. The royalty-free license was later extended to open-source software as well. Much has been made of the fact that CPPA v2 still cannot be considered completely unencumbered, but it remains, to my knowledge, the only application of the technology covered by the relevant IBM patents that IBM has publicly pledged to license royalty-free. The practical effect of this as far as I can see is to make ebXML the only TPA-based B2B ecommerce framework that can be implemented without incurring a future obligation to pay royalties to IBM for the TPA component..." From the posting "The Significance of CPPA v2," by Jon Bosak, 2002-11-23.

[June 20, 2002] Summary of the ebXML topic 'IBM IPR claims against CPPA' as provided in a proposed draft statement from James Bryce Clark, 2002-06-20: "... not all of the issues are yet resolved, and the final language for some of the restrictions may not have been reached. The TC notes that its advancement of the standard does not indicate an evaluation of the IBM claims, nor an endorsement or guarantee of the commercial suitability of the eventual IPR terms. Refinement of those terms is continuing. The TC reserves the right to withdraw the standard if final permissions and terms appropriate to ebXML's goals cannot be obtained. The [OASIS ebXML] TC is concerned about several yet unresolved aspects of the current IPR declarations. The absence of permission to develop nonprofit derivative works from the specification continues to impair several significant open source development efforts. We hope to obtain clearer use permission for such efforts consistent with conventional open source development. The timing of the declarations is also unfortunate. IBM made substantial donations in 1999 of technical work that then appeared to be free of claims. That work was considered in the formulation of the final approved ebXML standards throughout 2000 and 2001. Only in 2002 was it disclosed that IBM discovered that relevant patents and patent applications had been in process throughout that period. A substantial part of the ebXML community relies on low-cost vendor-neutral standards use and tools. Timely earlier disclosure of the claims might have permitted a less disruptive exclusion of, or negotiation regarding, patent-impaired work. Appropriate action in light of those impairments, and refinements to the IPR rules to reduce delayed-disclosure loopholes in the future, may be the subject of further analysis by OASIS members."

[June 07, 2002] As of 2002-06-07 5:06 PM CDT, the website of the OASIS ebXML Collaboration Protocol Profile and Agreement TC referenced a document on 'Intellectual Property Rights' under the title "Statement from IBM regarding intellectual Property Rights" [IBM OASIS ebXML Intellectual Property Disclosure, May 16, 2002]. This document also references a 'FAQ' statement from IBM, 30-May-2002. In this connection, see the statement of Patrick Gannon, OASIS CEO, to the effect that the IBM communiqué of May 30, 2002 "clarifies many of the concerns that have been raised by members of the CPPA TC and other organizations planning to implement the CPPA specification. IBM has clarified two major issues related to (1) the reciprocity of licensing any patent claims from other parties, and (2) granting their royalty-free license to the currently published v1 & v2 specs with a commitment to extend the royalty-free license to future versions of the specs should such future version of the CPPA specs be delivered." The website document said, in part:

IBM will, upon written request, provide a nonexclusive, royalty free patent license, with other reasonable terms and conditions for all patents issued to IBM which contain essential claims and for which IBM is able to provide patent licenses (including the issued patent and unpublished patent application disclosed above), for the OASIS ebXML Collaboration Protocol Profiles (CPP's) and Collaboration Protocol Agreements (CPA's) Versions 1 and 2 specifications. This patent license is available to all entities willing to grant IBM a reciprocal license. Any party wishing to request a patent license, in support of OASIS ebXML CPP and CPA Versions 1 & 2 specifications should write to: IBM Director of Intellectual Property & Licensing; IBM Corporation, North Castle Drive, Armonk, N.Y., 10504..."

Q: Why did IBM provide a license to all patents required by the specifications? A: IBM wanted to remove any potential confusion regarding implementation of the specification. Since a complete patent search and analysis of a large portfolio is very time consuming, IBM wanted to provide the assurance that our portfolio would not impede adoption of the specifications."

Background. On March 28, 2002 Chuck Adams Jr. of IBM sent an "IBM Intellectual Property Disclosure for OASIS" declaring that one unpublished patent application and one issued patent were relevant to the OASIS TC specifications. The intellectual property disclosure identified patents as related to ebXML Collaboration Protocol Profiles (CPPs) and ebXML Collaboration Protocol Agreements (CPAs). The declaration indicated that IBM would grant OASIS RAND licenses "in accordance with IBM's usual licensing practices, when there is a necessary dependence upon IBM patent claims to implement the specifications." According to statements reported by ZDNet, Ray Walker (steering group chairman of the United Nations Centre for Trade Facilitation and Electronic Business) and OASIS CEO Patrick Gannon, the ebXML development community was surprised by the IBM declaration; ebXML participants had fully expected royalty-free terms, since IBM had earlier declared that it was donating the pertinent (draft TPA) specification to OASIS.

Initially IBM defended its position in the IP declaration, asserting: (1) that "The disclosure was [supposed] to be made to ebXML (also RAND policy) in mid-2000 in conjunction with the startup of the CPP-CPA team" but there had been an "unfortunate snafu earlier somewhere inside IBM...someone dropped the ball"; (2) that with respect to "IBM was donating all of its TPA work to ebxml... 'There is donating the draft specification and donating the IPR; they are two different things..."; (3) that "... the [patent] filing date is long before IBM said anything about electronic agreements publicly and long before the ebXML CPP-CPA team got started..."; (4) that the "very late disclosure" of RAND license encumbrance "was a screw-up, not a malicious act...". On April 18, 2002 an informal message from IBM's Martin Sachs indicated that IBM had decided not to "charge royalties for either of the two patents mentioned in the declaration"; James Bryce Clark signified in response that the ebXML team expected "to be able to reach a satisfactory resolution." The IBM response was judged unsatisfactory to some because of its informality and because it would still require ebXML implementers to apply to IBM for a license.

As of 2002-04-24, James Bryce Clark indicated that "the question of whether IBM is going to provide an irrevocable assurance is still not settled. It is possible that they will come to realize that 'we aren't charging for it this week' isn't a full answer..."; he noted that "'I won't charge today' and 'I won't charge ever' are different..."

Articles:

[April 22, 2002] "Critics See Hold On Trading Partner Portion of the Spec as Big Blow to Open Standards." By Michael Meehan. In ComputerWorld (April 22, 2002). "A patent claim by IBM covering a submission it made to the electronic-business XML standards body created a furor last week over the notion of open standards and the ability of vendors to curb their proprietary tendencies. Last month, IBM notified the Organization for the Advancement of Structured Information Standards that it holds a patent for the trading partner agreement portion of the ebXML e-commerce trading specifications. Bob Sutor, director of e-business standards strategy at IBM, was chairman of the Billerica, Mass.-based OASIS board when IBM submitted the Trading Partner Agreement Markup Language to be part of what OASIS has called 'an open XML-based infrastructure that will enable business information to be exchanged consistently on a global basis.' Although IBM said it wouldn't charge for use of the technology, many viewed its claim to the patent as a complete sellout of ebXML's original open-standards promise... Martin Sachs, an IBM executive who chaired the ebXML trading partners project team, wrote, 'There was an unfortunate snafu earlier somewhere inside IBM. The disclosure [about IBM's patent claim] was to be made to ebXML in mid-2000 in conjunction with the start-up of the [trading partner] team, but someone dropped the ball.' While that appears to quell immediate royalty payment concerns, Jamie Clark, chairman of the Chicago-based American Bar Association's Business Law Subcommittee on Electronic Commerce and a member of the ebXML joint coordinating committee, noted that IBM could still pull its submission at a later date. He also expressed concern that competitors could be limited in how they implement the standard in their products. 'The question becomes, How do you feel building around a standard that's been in some way branded?' said Clark. Simon Phipps, chief technology evangelist at Sun Microsystems Inc., called the move 'the renaissance of the old IBM.' He said actions like this 'raise questions about the entire standards process.' Phipps argued that companies like IBM with large patent portfolios could hijack anything claiming to be an open standard by waiting for adoption and then asserting their rights. 'It lets you have a degree of control over your competitors and how they compete with you,' he said..."

[April 18, 2002] "IBM Drops Internet Patent Bombshell." By David Berlind. In ZDNet Tech Update (April 16, 2002). "A recent IBM patent claim could threaten royalty-free access to a key Internet standard protocol backed by the United Nations. The standard -- called ebXML -- is an XML-based set of definitions for electronic transactions and business collaboration. IBM's patent claim was made in an intellectual property disclosure filed in late March with the Organization for the Advancement of Structured Information Standards (OASIS). Executives from both the United Nations and OASIS said they expected the ebXML specification to be royalty-free and unencumbered by patent claims. Both said they were surprised by the sudden appearance of the disclosure. According to IBM's disclosure statement, the company has one patent and one patent application that it believes are relevant to compliance with ebXML's Collaboration Protocol Profiles (CPPs) and Collaboration Protocol Agreements (CPAs) specifications..." [alternate URL]

[April 18, 2002] "IBM ebXML Patent Plan Royalty-Free." By Wylie Wong. In ZDNet Tech Update (April 18, 2002). ['Big Blue says it will not seek royalties on a patented e-commerce Web standard that helps companies in many industries communicate over the Internet.'] "At issue is a Web standard called Electronic Business XML, or ebXML, which allows companies in many industries to communicate over the Web. It was a standard created by a United Nations organization and by the Organization for the Advancement of Structured Information Standards, or OASIS, a consortium of tech companies that includes IBM, Sun Microsystems, BEA Systems and Hewlett-Packard. IBM's patent claim came to light as part of an intellectual property disclosure filed with OASIS in late March. An IBM representative on Thursday said the company owns one patent in the ebXML standard and has another patent pending. But the company has decided not to charge royalties on the patents... An IBM executive last fall said the company has historically worked in both royalty-free and RAND environments, and chooses to use one or the other on a case-by-case basis, depending on the technologies..."

[April 18, 2002] "IBM ebXML Patent." By Dave Winer. XML-DEV eclectic. April 18, 2002. "IBM apparently has patents that relate to ebXML (link posted by Len Bullard). They're offering a RAND option. There's something so deeply wrong here that I can't begin to describe it. Part of what makes me uncomfortable is that a big company can join a standardisation process, thereby lending it weight and increasing it's likelihood of being successful. Yet they can exploit the process by charging fees for the results. How about a change in the law to the effect that open standards can't be subject to patents? Or, to put it another way, a company cannot charge patent licensing fees for open standards -- everything is royalty free. But still allow the company to charge fees for use of the technology outside of the standard. The interesting corollorary to this is that companies would become very keen to follow standards, to the letter, because otherwise they'd be subject to licensing costs..."

[April 18, 2002] "[XML-DEV] Patents." Posted to XML-DEV by Len Bullard. "It is definitely time to overhaul the patent systems worldwide. The Europeans aren't above this either. The IBM patent may be a mortal wound to ebXML but I wouldn't be too sure yet. It may also be the straw that gets the attention of Congress. That is the kind of attention that has a way of chilling everybody's party. On one hand, we have the massive theft of intellectual property (the entertainment cases) and on the other hand, very large well funded companies pursuing a very profitable patent agenda that can effectively freeze use of the media, although it will force innovation. This is beginning to look like an election issue. If the software titans continue to use these tactics, the business industry will ignore their technologies. That will have an unpleasant effect on the web and XML. Business will not accept tollbooths on business transactions. It is possible to use the Internet and ignore the web. That's a good thing. When one part of an ecosystem becomes unviable, another usually gains in members. Conserve options. This is when you need them..."

[August 28, 2003]W3C Opens Public Discussion Forum on US Patent 5,838,906 and Eolas v. Microsoft. W3C has published a report from Steven R. Bratt (W3C Chief Operating Officer) on the matter of US Patent 5,838,906 and the Eolas v. Microsoft lawsuit. The patent is described as applicable to Java applets, browser plug-ins, ActiveX components, Macromedia Flash, Windows Media Player, and related "embedded program objects." The W3C document reports on a recent meeting of W3C Members and other key commercial and open source software interests, held to "evaluate potential near-term changes that might be implemented in browsers, authoring tools, and Web sites as a result of the court case." A new W3C 'public-web-plugins' list provides a public discussion forum for those concerned with the patent and recent court decisions. Since the patent may "potentially have implications for the World Wide Web in general, including specifications from W3C, the W3C believes that it is important for the Web community to begin now to consider and contribute to the range of technical options available." According to W3C's summary, the relevant patent assigned to The Regents of the University of California and managed by Eolas Technologies Inc. "claims to cover mechanisms for embedding objects within distributed hypermedia documents, where at least some of the object's data is located external to the document, and there is a control path to the object's implementation to support user interaction with the object. The implementation can be local or distributed across a network, and is automatically invoked based upon type information in the document or associated with the object's data."

"Saving the Browser. By Ray Ozzie. In Ray Ozzie's Weblog. September 12, 2003 [or later]. An account of Lotus Notes development in relation to the Eolas lawsuit. Ray Ozzie says: "... For my own interest, and for the record, I recently spent a little time pursuing my intuition that Lotus Notes R3 might be viable prior art relative to the patent in question. I am not an attorney, and I am surely not well versed in the nuances of the case, but it seems to me after initial investigation that there is indeed quite a bit of relevance..."

According to the 1997 article of "History of the Portable Network Graphics (PNG) Format" from Greg Roelofs, the popular PNG image format was developed in response to an attempt by Unisys to enforce patents/royalty fees on the ubiquitous GIF (Graphics Interchange Format): "'The LZW algorithm was incorporated [into GIF] from an open publication [says Tim Oren, then Vice President of Future Technology at CompuServe], and without knowledge that Unisys was pursuing a patent. The patent was brought to our attention, much to our displeasure, after the GIF spec had been published and passed into wide use.' There are claims that Unisys was made aware of this as early as 1989 and chose to ignore the use in 'pure software'; the documents to substantiate this claim have apparently been lost. In any case, Unisys for years limited itself to pursuit of hardware vendors--particularly modem manufacturers implementing V.42bis in silicon... All of that changed at the end of 1994. Whether due to ongoing financial difficulties or as part of the industry-wide bonk on the head provided by the World Wide Web, Unisys in 1993 began aggressively pursuing commercial vendors of software-only LZW implementations. CompuServe seems to have been its primary target at first, culminating in an agreement -- quietly announced on 28 December 1994, right in the middle of the Christmas holidays -- to begin collecting royalties from authors of GIF-supporting software. The spit hit the fan on the Internet the following week; what was then the comp.graphics newsgroup went nuts, to use a technical term. As is the way of Usenet, much ire was directed at CompuServe for making the announcement, and then at Unisys once the details became a little clearer; but mixed in with the noise was the genesis of an informal Internet working group led by Thomas Boutell. Its purpose was not only to design a replacement for the GIF format, but a successor to it: better, smaller, more extensible, and free..." [published in the Linux Gazette in January 1997 and was subsequently (re)printed in the April 1997 issue of Linux Journal; also as Chapter 7 of PNG: The Definitive Guide, O'Reilly, June 1999]

"... Unisys also waited more than 10 years before trying to enforce its patent on GIF -- the Web's most commonly used graphics file format. Although the patent for GIF was awarded in 1985, it wasn't until 1999 that Unisys began asking companies such as Yahoo and Disney to start paying for its use. As a result, some Web sites have considered alternative file formats to GIF such as PNG. Unisys's patent expires in the United States in 2003..." [From the 2002-04-11 ZDNet article of Adrian Mello, "Will Patent Disputes Spoil the Web's success?"]

From The GIF Controversy: A Software Developer's Perspective. "Between 1987 and 1994, GIF (Graphics Interchange Format) peacefully became the most popular file format for archiving and exchanging computer images. At the end of December 1994, CompuServe Inc. and Unisys Corporation announced to the public that developers would have to pay a license fee in order to continue to use technology patented by Unisys in certain categories of software supporting the GIF format..." - mcb

Unisys website statement [2002-05-02]: "License Information on GIF and Other LZW-based Technologies: More and more people are becoming aware that the reading and/or writing of GIF images requires a license to use Unisys patented Lempel Ziv Welch (LZW) data compression and decompression technology, including United States Patent No. 4,558,302, Japanese Patent Numbers 2,123,602 and 2,610,084, and patents in Canada, France, Germany, Italy and the United Kingdom. Since January of 1995, Unisys has entered into almost two thousand license agreements for use of GIF and other LZW-based technology..."

Update 2002-08-26. According to CRN's "Judge Throws Out Hyperlink Lawsuit," "...U.S. District Judge Colleen McMahon rejected BT Group's claim that it owns the patent on hyperlinks... McMahon rejected BT's claim that each Web server on the Internet is a central computer and thus the Internet falls within the patent's scope...'The Internet is a network of computers intertwined with each other in order to allow users around the world to exchange information,' she wrote. 'The whole purpose of the Internet is for the sources of information to be in many places rather than centralized'..."

Summary: In June and December 2000, British Telecom apparently began to make threats against US companies on the basis of claims that it had a patent governing hyperlink technology; it apparently filed a lawsuit against Prodigy. Authorities in the field of hypertext generally regard the claim preposterous, not least for the reason that Doug Engelbart, Ted Nelson, and others "invented" hyperlinking years before the putative BT patent(s). The Register for example reported: "Apparently, on December 9, 1968, Douglas C Engelbart and 17 researchers at the Augmentation Research Center, Stanford Research Institute, in Menlo Park, California presented a 90-minute live public demo in which hypertext was wheeled out for all to see. The demo also included the first public appearance of the 'mouse'. Real Player footage of the demo can be here..." See also MouseSite for more extensive coverage of the "pioneering work of Douglas Engelbart and his colleagues at Stanford Research Institute in the 1960s."

From Reuters, reporting in USA Today (February 2002): "Since the controversial lawsuit became public in late 2000, BT has come under heavy fire from computer programmers, developers and Web business executives alike, a group that has traditionally attacked technology patents of any kind. Public critics of BT say the notion of hypertext linking was devised decades before BT developed its own version in the 1970s, for which it was issued the US patent in 1989. In a unique display of solidarity, the Internet and legal communities have used Web message boards over the past year to ferret out claims that "prior art" for hypertext links exists. Most cite British scientist Ted Nelson, who ostensibly coined the word 'hypertext' in 1963, using the term in his book Literary Machines in 1965..."

From on the "BT Hyperlink Patent": "British Telecom in the 70s and 80s filed patents in the US on the concept of cross-references in hypertext. In 2000 BT discovered one of these "Rembrandts in the Attic" (US 4,873,662) and decided to use it for squeezing money out of internet access providers. Litigation is beginning in 2002-02..."

From "BT Goes to Law Over Hyperlink Patent" by BBC News Online internet reporter Mark Ward. 15-December-2000. "BT [British Telecom] is going to court to enforce its claim to have invented the hyperlinks that bind the internet together. This week, it filed a lawsuit in a New York court seeking damages from a US internet service provider over its use of hyperlink technology. Earlier this year, BT claimed to have invented hyperlinks - the technology that lets people jump from webpage to webpage with the click of a mouse... A spokeswoman for BT said it did not know how long it would take for the court case to be settled but was expecting it to take a long time. She did not rule out legal action against other companies if discussions with them proved fruitless. BT has yet to receive a penny in licence fees. Many industry historians poured scorn on BT when it made its announcement pointing out that hypertext and hyperlinks were developed by US computer scientist Ted Nelson long before BT thought them up. Tim Berners-Lee, the man widely credited as the driving force behind the World Wide Web, says Mr Nelson was a key influence."

From "BT Launches US Hyperlinks Legal Action," by Tim Richardson, in The Register (December 14, 2000): "... In June [2000], BT said it owned the patent to hyperlinks and wanted ISPs in the US to cough up hard cash for the privilege of using them. Since then it has been negotiating with a number of ISPs in the US over recouping revenue. But it has always insisted that if this proved fruitless, it would resort to legal action. The monster telco said a patent filed in 1976 - and granted in 1989 - proves it owns the intellectual property rights to those natty little devices that link Web content together. Patent 4,873,662 was lodged following work on text-based online information systems Viewdata and Prestel by the General Post Office (GPO) before it was split into the Post Office and BT. No one at Prodigy returned calls this afternoon. When we explained the situation to one woman, she just laughed. Out loud. Uncontrollably..."

In September 2004, the Apache Software Foundation (ASF) sent an open letter to the IETF MTA Authorization Records in DNS (MARID) Working Group announcing the decision of ASF projects not to implement or deploy the IETF Sender ID specification under terms required by Microsoft's Patent License Agreement. The letter from Apache also expressed concern that "no company should be permitted IP rights over core Internet infrastructure" and urges the IETF to "revamp its IPR policies to ensure that the core Internet infrastructure remain unencumbered." Other entities, including Earthlink and Debian Project, also announced decisions not to implement the Sender ID spec under the Microsoft Patent License Agreement.

Background: Legal review of the Microsoft Patent License Agreement General Counsel of the Open Source Initiative and others determined that Microsoft's license terms were "generally incompatible with open source, contrary to the practice of open Internet standards, and specifically incompatible with the Apache License 2.0." According to the text of a "Conversation with MSFT Regarding License" posted to the MARID WG by Matt Sergeant (MessageLabs) as a 'Report on Sender-ID meeting hosted by Microsoft on August 31, 2004': "... Ultimately I put it to him [Craig Spietzle, Microsoft] that the license would have to change should open source implementations of Sender-ID be a requirement for adoption. I pressed him: 'Will you fix the license?'. I never really got a confirmed yes or no, but my feeling was 'no' when we ended the conversation. I suggested that they give their IP to the IETF (such as I believe there is precedence of — I know that IBM has committed patents to the public domain before in a similar act of openness), to which I was told that Craig believed this was a reasonable idea, but that Bill Gates himself had vetoed that idea because of the current focus on patent gathering..."

Microsoft Corporation's Complaint and Demand for Jury Trial, In the United States District Court for Northern District of California, Microsoft Corporation (Plaintiff) v Compression Labs Inc., and Forgent Networks, Inc. (Defendants)...

1. "Microsoft Corporation ('Microsoft') files this complaint agsinst [CLI/Forgent] ... seeking, among other relief, the following: (a) a declaratory judgment that U.S. Patent No. 4,698,672 ('the "672" Patent') is not infringed, is invalid and is unenforceable, in whole or in part, for the reasons alleged below; (b) a declaratory judgment that Microsoft has a direct and/or implied license to the '672 patent; (c) a declaratory judgment that CLI/Forgent be estopped from attempting to enforce the '672 patent; and (d) damages and declaratory relief under statutory and common law for CLI/Forgent's statutory unfair competition, equitable estoppel and patent misuse...

6. In addition to bringing suit against Microsoft's customers in the Texas Actions, CLI/Forgent has suggested to Microsoft, in correspondence, that Microsoft needs to take a license under the '672 patent to "compensate CLl for [Microsoft's] use of JPEO encoding and decoding technology covered by the '672 Patent." Therefore, Microsoft has an objectively reasonable apprehension that CLI/Forgent will bring suit against it. (7) An actual controversy exists between Microsoft and the Defendants, and Microsoft is entitled to declaratory relief in the form requested herein...

8. The JPEG Standard was first adopted in September 1992, following years of research and collaboration in the international standards community, which included the International Standards Organization ("ISO"), the International Telegraph and Telephone Consultative Committee ("CCITT") and the American National Standards Institute ("ANSI").

9. The JPEG Standard defines an international standard for compression, decompression, transmission and storage of digital still images — anything from photographs to documents to graphics. The JPEG Standard permits users to store and share digital still images among products from various manufacturers without concern over compatibility. Products that incorporate the JPEG Standard include a wide variety of hardware devices or software applications such as personal computers, personal digital assistants, digital cameras, digital camcorders, cellular telephones, Internet browsers, document or photo viewers, editing software, printers, scanners, fax machines and the like. The most common representation of the JPEG Standard is the ".jpg" file extension used on computers and related devices to store photographs and other digital still images.

10. CLI/Forgent has been and is attempting unlawfully to subvert the JPEG Standard and to extract millions of dollars in unwarranted profits based on consumers' long reliance on the JPEG Standard through their purchases of JPEG-enabled products. Now that industries and their customers have adopted and become dependent on the JPEG Standard, CLI/Forgent is attempting to assert the '672 patent against the standard, insisting that the '672 patent covers technology embodied in and essential to practicing the JPEG Standard.

11. CLI/Forgent has initiated a campaign of threats, litigation and other tactics designed to cause doubt and uncertainty and ultimately to prevent others from freely practicing the JPEG Standard. CLI/Forgent intends to force manufacturers to make unwarranted licensing payments to CLI/Forgent, thus denying producers and users of JPEG-enabled products the benefits and efficiencies of a ubiquitous standard. CLI has sued more than 30 companies that refused to capitulate to its licensing demands, wrongfully alleging that the practice of the JPEG Standard infringes the '672 patent.

12. CLI/Forgent's campaign to enforce the '672 patent stems from a history of deception, delay and improper behavior. CLI's unlawful conduct is highlighted, in part, by the following: (i) CLI intentionally failed to disclose known, material prior art to the United States Patent and Trademark Office (the 'Patent Office'); (ii) CLI engaged in a pattern of misleading conduct, silence and misrepresentations about the purported relevance of the '672 patent to the JPEG Standard; (iii) CLI/Forgent unreasonably and inexcusably delayed in notifying Microsoft and its customers of their alleged infringement; and (iv) CLI/Forgent committed deceptive and misleading conduct by claiming to have acquired control over the technology in the JPEG Standard that companies have incorporated into their products, despite the knowledge that: (a) the '672 patent is not infringed, is invalid and is unenforceable; (b) the '672 patent was obtained through fraud on the Patent Office by failing to disclose anticipatory prior art; and (c) CLI failed to disclose the purported applicability of the '672 patent to the standard-setting community, during its participation in the adoption of the JPEG Standard..."

"The Joint Photographic Experts Group (JPEG) and the Joint Bi-Level Image experts Group (JBIG) are joint committees of the ITU (Telecommunications branch, ITU-T) and ISO/IEC JTC1 SC29 WG1. They have been meeting for over ten years, initially starting as a working group of SC2, responsible for character coding... The best known standard from JPEG is IS 10918-1 (ITU-T T.81), which is the first of a multi-part set of standards for still image compression. A basic version of the many features of this standard, in association with a file format placed into the public domain by C-Cube Microsystems (JFIF) is what most people think of as JPEG..." [Home page]

"Considerable interest has been expressed in the views of the JPEG committee concerning claims made by Forgent Networks Inc on their web site concerning intellectual property that Forgent have obtained through their acquisition of Compression Labs Inc. They refer specifically to US Patent 4,698,672, which refers amongst other claims to technology which might be applied in run length coding, found in many technologies including the implementations of a baseline version of ISO/IEC 10918-1, commonly referred to as JPEG. The committee has examined these claims briefly, and at present believes that prior art exists in areas in which the patent might claim application to ISO/IEC 10918-1 in its baseline form. The committee have also become aware that other organisations including Philips, and Lucent may also be claiming some elements of intellectual property that might be applied to the original JPEG and JBIG (IS 11544 standards)."

"... the JPEG committee will be collecting, through its new web site (to be launched shortly) a substantial repository of prior art and it invites submissions, particularly where the content may be applied to claims of intellectual property. A note will be placed on the web site shortly explaining the process for such submissions. This effort will take some time to organise, but the JPEG committee hope to have it in place prior to its next meeting in Shanghai in October 2002."

"It has always been a strong goal of the JPEG committee that its standards should be implementable in their baseline form without payment of royalty and license fees, and the committee would like to record their disappointment that some organisations appear to be working in conflict with this goal. Considerable time has been spent in committee in attempting to either arrange licensing on these terms, or in avoiding existing intellectual property, and many hundreds of organisations and academic communities have supported us in our work."

"The up and coming JPEG 2000 standard has been prepared along these lines, and agreement reached with over 20 large organisations holding many patents in this area to allow use of their intellectual property in connection with the standard without payment of license fees or royalties..."

References:

[April 22, 2005] "Graphics Patent Suit Fires Back at Microsoft." By Dawn Kawamoto. From CNET News.com (April 22, 2005). "Forgent Networks has filed a lawsuit against Microsoft, alleging the software giant infringed on its digital-image compression patent that serves as the technology behind JPEG. Austin, Texas-based Forgent, which makes scheduling software, announced Thursday that it filed the suit through its Compression Labs subsidiary. The suit, filed in U.S. District Court in the Eastern District of Texas, comes in response to a suit Microsoft filed last week, asking the courts to find Forgent's patent unenforceable. The patent in question, U.S. patent No. 4,698,672, relates to the technology behind JPEG. The format is one of the most popular methods for compressing and sharing images on the Internet. Forgent initially tried to sell this patent to Compaq Computer to give it a counterclaim in its lawsuit against MPEG LA. The deal fell through, however, and Forgent more closely examined its claims for still impression. The company determined that the JPEG standard, used to compress images in cameras and on computers, infringed on its patent. '(Forgent) is subverting the JPEG standard to extract millions of dollars in unwarranted profits,' Microsoft's lawsuit states. Forgent has initiated lawsuits against 44 companies, alleging those businesses infringed on its '672' patent. During the past three years, Forgent has generated more than $100 million from licensing its 672 patent..." See also the Forgent press release and Microsoft's complaint against CLI/Forgent on April 15, 2005.

[September 24, 2004] "Forgent Readies Post-JPEG Patent Targets." By Matt Hicks. In eWEEK (September 24, 2004). "The company that is suing 42 major technology vendors over their use of technology in the JPEG image standard is preparing for its next patent targets. Forgent Networks Inc., the owner of a patent it says covers compression technology in JPEG, is working to expand its intellectual property licensing program to include some of the approximately 50 other patents in its portfolio... [Forgent's CFO Jay] Peterson said he expects the lawsuits, filed in U.S. District Court for the Eastern District of Texas, to be consolidated and to reach a trial in the next year to 18 months. The JPEG patent has yet to be tested in court. Forgent's patent licensing and lawsuits have raised the ire of patent-reform advocates. Jason Schultz, a staff attorney at the Electronic Frontier Foundation in San Francisco, said he is not surprised that Forgent is considering an expansion of its patent licensing program and said the company is one of a growing number of 'shake-down operations.' 'There are more and more of these types of patent-mill companies that apply for patents themselves or acquire them and pair up with contingency-fee lawyers and fire at will with lawsuits,' he said... Peterson defended Forgent's licensing and lawsuit attempts, saying the company has a responsibility to shareholders to defend its intellectual property..."

[April 22, 2004] "JPEG Hits New Patent-Infringement Snag." By Matt Hicks. In eWEEK (April 22, 2004). "Patent infringement issues surrounding the JPEG image standard resurfaced on Thursday after a small software vendor filed lawsuits against 31 companies ranging from Adobe Systems Inc. and Apple Computer Inc. to IBM and Hewlett-Packard Co. Forgent Networks Inc. said that it had filed two separate patent infringement lawsuits in U.S. District Court for the Eastern District of Texas, seeking injunctions against the use of its patented technology as well as damages. Forgent, through its subsidiary Compressions Labs Inc., holds a patent on digital image compression technology that company officials said is fundamental to the JPEG format, a file standard used throughout software applications, digital cameras and devices, and the Web. Michael Noonan, director of investor relations for Austin, Texas-based Forgent, said the patented technology covers the algorithm used in JPEG to compress data for transport, encoding and decoding. Forgent had sought to reach licensing arrangements with the defendants in the lawsuit... Noonan said the JPEG-related image compression patent is due to expire in October 2006, but that Forgent would be able to continue to seek claims of past infringement..."

[April 22, 2004] "Forgent Networks Sues 31 Companies for Patent Infringement." - "Forgent Networks announced today that its wholly owned subsidiary, Compression Labs Inc., has initiated litigation against 31 companies for infringement of United States Patent No. 4,698,672 (the '672 Patent) in the United States District Court for the Eastern District of Texas, Marshall Division. Over the last two years, Forgent's intellectual property business has generated approximately $90 million from licensing the '672 Patent to 30 different companies in Asia, Europe and the United States. Forgent has sought to reach agreements on numerous occasions with all these companies, but as of today, none of the defendants have chosen to license. Forgent has retained Jenkens & Gilchrist, a national law firm, and The Roth Law Firm, of Marshall Texas, to represent it in the litigation. The defendants are: Adobe Systems Incorporated, Agfa Corporation, Apple Computer Incorporated, Axis Communications Incorporated, Canon USA, Concord Camera Corporation, Creative Labs Incorporated, Dell Incorporated, Eastman Kodak Company, Fuji Photo Film Co USA, Fujitsu Computer Products of America, Gateway Inc., Hewlett-Packard Company, International Business Machines Corp., JASC Software, JVC Americas Corporation, Kyocera Wireless Corporation, Macromedia Inc., Matsushita Electric Corporation of America, Oce' North America Incorporated, Onkyo Corporation, PalmOne Inc., Panasonic Communications Corporation of America, Panasonic Mobile Communications Development Corporation of USA, Ricoh Corporation, Riverdeep Incorporated (d.b.a. Broderbund), Savin Corporation, Thomson S.A., Toshiba Corporation and Xerox Corporation. The '672 Patent relates to digital image compression, and fields of use include any digital still image device used to compress, store, manipulate, print or transmit digital still images such as digital cameras. However, the '672 patent extends beyond digital cameras and includes many digital still image devices such as personal digital assistants, cellular telephones, printers, scanners and other devices used to compress, store, manipulate, print or transmit digital still images. Forgent has the exclusive right to use, license and enforce all the claims under the '672 Patent in all fields of use involving digital still image compression. 'Forgent is committed to developing all of its assets and technologies to maximize shareholder value. We believe we will prevail in this litigation as the '672 Patent is valid, enforceable and infringed,' said Richard Snyder, chairman and CEO of Forgent. 'It's unfortunate that despite the many opportunities these companies have had to license the patent, they have all declined to participate, leaving us no alternative but to litigate'..."

[August 06, 2002] "No More JPEGs - ISO to Withdraw Image Standard." By Andrew Orlowski. In The Register (July 23, 2002). "The ISO standards body will take the unprecedented step of withdrawing the JPEG image format as a formal standard if Forgent Networks, a small Texan company, continues to demand royalties on a seventeen-year old patent. The Register has spoken to representatives of both the JPEG committee and Forgent Networks this week. According to Richard Clark, JPEG committee member and JPEG.org webmaster, Forgent's royalty grab -- coming after two decades of royalty-free use -- means that ISO is obliged to withdraw the specification. 'Under ISO terms, formally you can only have a standard you can implement on free or RAND terms. 'Reasonable and non discriminatory (RAND) terms are typically published, and the same for everyone. It's clear that Forgent's claims are not RAND. $15 million doesn't sound like free to me, and Forgent is not publishing the terms of their licensing. 'ISO will withdraw the standard: JPEG will be no more,' he told us. However, ISO itself cannot formally take a stance on the patent, he added... Clark says he hopes the furore will help restrain European agencies from aping US patent law. 'It's becoming impossible to set standards in multimedia; huge numbers of patents are granted. In Japan there are 4,000 patents on image and wavelet technology alone. It's followed the US model, where for many, many years, the US has allowed patents on very small changes to very detailed technical terms and where the benefits are few,' said Clark. He advocates shifting the burden of proof onto the patent holder. 'Originally patents were a bargain to protect a little man with a brilliant invention. Now they're held by big corporates, and often extended beyond the lifetime of the product. He would like to see what clauses of a standard a claim applies to within six months of the standard being published; and for patent claimants to publish details of their licensing..."

"Forgent Claims Rights to JPEG Patent." By Mark Hachman. July 19, 2002. From ExtremeTech. "... Viewing a digital photo album, scanning a picture, even browsing the Web -- all of these could become a little more expensive now that a small video firm has claimed it owns the fundamental rights to the implementation of the JPEG standard. Forgent Networks, an Austin, Tex.-based video networking firm, has laid claim to one of the fundamental technologies underlying the World Wide Web. Even more significantly, the firm has already convinced two firms, including Sony Corp., to pay millions of dollars in royalties... Actually, the so-called JPEG standard is not actually the standard in common use on the Internet. Instead, most JPEG files are apparently built around the JFIF standard, which was developed by the Independent JPEG Group and was placed into the public domain by C-Cube Microsystems, according to the JPEG home page, before C-Cube was acquired by LSI Logic..."

"JPEG Patent Claim Sparks Concern." By Joanna Glasner. In Wired News (July 19, 2002). "Since 1986, Patent No. 4,698,672 has done little more than languish in the archives of the U.S. Patent and Trademark Office. Government examiners first issued the patent, which covers a 'coding system for reducing redundancy' to a San Jose, California, company called Compression Labs. The approval came more than a decade before the digital imaging technology known as JPEG reached mass-market popularity. Sixteen years later, however, the Austin, Texas, software developer that now owns the patents is seeing fresh value in an old document. The company, Forgent Networks, says the patent directly applies to a compression technique used in the creation of JPEG images. Now, Forgent says it is seeking licensing revenue from companies that implement JPEG in "all fields of use," with the sole exception of the satellite broadcast business..."

"JPEG Patent Becoming a Battleground." By Michael Singer. From InternetNews.com. July 19, 2002. "The video conferencing company said it has "the sole and exclusive right to use and license all the claims under the '672 patent that implement JPEG in all 'fields of use' except in the satellite broadcast business." And those so called "fields of use?" Pretty much everything connected to the Internet: digital cameras, digital still image devices, personal digital assistants (PDAs), cellular telephones that download images, browsers, digital camcorders with a still image function, scanners and other devices used to compress, store, manipulate, print or transmit digital images... The JPEG patent No. 4,698,672 was originally issued to San Jose, Calif.-based Compression Labs (formerly VTEL). The company filed for the patent in 1986 but never collected royalties. Forgent acquired the company, technology and the patent in a 1997 acquisition of Compression Labs... Which, for some, raises the question of the legitimacy of the licensing process considering the company began looking to collect only after the file format became an industry standard..."

"Forgent Claims JPEG Patent. Others Cry Foul." By Gillian Law (IDG News Service). From NetworkWorld. July 19, 2002. "Forgent Networks last week announced that it holds the patent to the JPEG image compression technology, for both color and black and white images, and intends to license it to a variety of manufacturers. Forgent intends to approach makers of digital still cameras, printers, scanners, PDAs, cell phones than download images, camcorders with a still image function, browsers and any other devices used to compress, store, manipulate, print or transmit digital images. 'We have a patent for a specific algorithm or method that forms part of the process of data compression. We have been in touch with manufacturers of this type of device to talk about licensing the use of that method, and we have reached agreement with Sony and one unnamed consumer electronic company,' spokeswoman Hedy Baker said Friday... However, Håkon Lie, CTO of Opera Software ASA of Oslo, Norway, said Friday that he doesn't believe the patent can be enforced..."

In January 2002, an announcement from MPEG LA LLC about MPEG-4 royalties and use-fees angered several constituencies. The use fee was set at $0.00033 per minute, equivalent to 2 cents an hour for MPEG-4 video data, to paid for by ISPs (thus, pased on to end users). As of 2002-06-08, the licensing disagreement between the MPEG LA (with its 18 patent-holding companies) and industry was into its fifth month of stalemate. Apple Computer said it hopes the licensing problem will be solved later in the summer (of 2002). According to Damien Cave (see below), "The debate over MPEG-4 has shaken the market.. instead of accepting MPEG-LA's expensive terms, or simply staying with the proprietary formats provided by Real, Microsoft and Apple, parts of the multimedia universe might do what the Net has always done best -- route completely around the problem."

"MPEG-4 Licences Go Live." In The Register (November 27, 2002). "The MPEG Licensing Authority, MPEG LA, this week said it is ready to start offering general licenses to companies wanting to use the MPEG-4 video format, after lengthy negotiations and concerns over the lack of royalty caps..."

[June 04, 2002] "Apple Backs MPEG-4 Despite Fee Dispute." By Joe Wilcox. In CNET News.com (June 04, 2002). ['Apple Computer on Tuesday released a public preview of QuickTime 6, signaling the possible end of a heated dispute between the computer maker and a licensing group that controls the use of MPEG-4 media technology.'] "The computer maker took the unusual step of releasing the software in absence of a final licensing agreement with MPEG LA, a licensing body representing 18 patent holders that have claims on underlying MPEG-4 technology, a next-generation compression format for video and audio. 'The licensing stuff is getting worked out,' Apple CEO Steve Jobs said in an interview Tuesday. Every "i" is not dotted and every "t" is not crossed, but it's getting there. I have a lot of confidence it will...' [...] MPEG LA confirmed that a final license had yet to be hammered out and said the QuickTime release indicated faith on Apple's part that the licensing terms would be acceptable. 'We don't have any new information on the licensing, and we hope that we'll have final terms sometime this summer,' said Larry Horn, vice president of licensing and business development for MPEG LA..."

[April 26, 2002] "RealNetworks: MPEG-4 Could Be DOA." By Stefanie Olsen and Gwendolyn Mariano. In ZDNet News (April 25, 2002). ['Proposed licensing fees for MPEG-4, a next-generation video compression standard, could mean its early death on the personal computer, RealNetworks CEO Rob Glaser said in a press conference Wednesday.'] "The licensing structure is putting the technology on a path to become irrelevant in the PC industry," Rob Glaser said after giving a keynote speech at the Streaming Media West conference... His remarks address a fee structure put forth in early February by MPEG LA, a licensing body representing 18 patent holders of the technology. Still under consideration by the group, the plan would require licensees to pay 25 cents for each MPEG-4 product, such as an encoder or decoder, with fees capped at $1 million a year. The plan also suggests charging a per-minute use fee, equivalent to 2 cents for each hour encoded in the format, that includes content on DVDs. Such fees would make it cost prohibitive for media players such as RealNetworks' RealOne or Apple Computer's QuickTime to support the emerging standard. Apple immediately rejected the proposed licensing terms, leaving the future of its QuickTime multimedia technology in limbo. The licensing impasse over MPEG-4 could help Microsoft, which has refused to sign on to the standards effort. Even if acceptable terms are eventually hammered out, the delay will give Microsoft more time to push its proprietary Windows Media format. MPEG-4 is the successor to MPEG-1 and MPEG-2, technologies behind digital broadcast transmissions over cable, satellite and the Internet. Like its predecessors, MPEG-4 comprises audio and video technologies that condense large digital files into smaller ones that can be easily transferred via the Web. It also adds such features as interactivity, e-commerce and digital rights management to audio and video files. RealNetworks is pursuing a dual strategy, Glaser said, partly to offset uncertainty over MPEG-4's future in light of the licensing issue. The company's proprietary media player system, RealSystem, supports MPEG-1 and MPEG-2 as well as MPEG-4. Meanwhile, the company on Wednesday backed the new standard by launching a site that promotes interoperability between different codecs, or video and audio compression and decompression technology... Some streaming media experts said there are few signs so far that MPEG LA feels pressured to drastically overhaul the proposed licensing structure..."

[April 11, 2002] "On2 Raises Antitrust Concerns About MPEG-4 Patent Pool." By Stacy Cowley. In ITWorld.com (April 11, 2002). "Streaming video technology developer On2 Technologies Inc. is seeking a government review of MPEG-4 licensing plans, which it argues may violate antitrust law. On2 sent a white paper Tuesday to the U.S. Department of Justice (DOJ), all 50 state attorneys general and several U.S. Congress members outlining its concerns about MPEG-4 and the patent pool by which a license for the technology is being created. The MPEG-4 (Visual) Patent Portfolio License is a package comprising patents from more than a dozen companies, each of which owns intellectual property deemed to be essential in complying with the proposed MPEG-4 digital compression standard. The package is administrated by MPEG LA LLC, a Denver company that oversees licenses for the MPEG-2 multimedia compression standard, a predecessor to MPEG-4. The DOJ in 1997 approved MPEG LA's plans to gather nine organizations' MPEG-2-related patents and offer a batch license to all of the patents necessary to comply with the standard, with the license proceeds shared among the patent holders. MPEG LA voluntarily sought the DOJ business review, a process that includes a statement of the DOJ's antitrust enforcement intentions... On2 isn't the first company to object to MPEG LA's MPEG-4 plans. Licensing terms proposed by the company in January drew harsh criticism from others in the industry, who charged that the group is seeking exorbitant royalty rates. Drawing particular fire is MPEG LA's suggested US$0.02 hourly charge for every stream or download of MPEG-4 video data for which the provider is paid, either directly by the end user or indirectly through advertisers. MPEG LA also proposed a fee of $0.25 per software or hardware encoder or decoder for MPEG-4 video data. Apple Computer Inc. delayed release of its QuickTime 6 software because it objected to MPEG LA's licensing terms..."

[March 26, 2002] "Internet Streaming Media Alliance Expresses Support for MPEG-4 AAC Licensing Terms. Industry Applauds Absence of Use Fees and Low Royalties for PC-based Decoding." [Not RF terms apparently, but an alternative; not clear just how low the rates are.] "The Internet Streaming Media Alliance (ISMA) today announced its enthusiastic support for the MPEG-4 Advanced Audio Coding (AAC) licensing models recently introduced by Dolby Laboratories. In contrast to the proposed terms for the MPEG-4 Visual license, the approach of the MPEG-4 AAC licensors does not involve royalties on the distribution of audio compressed in the MPEG-4 AAC format. 'The MPEG-4 AAC co-licensors listened to licensees and understand the complexities of the marketplace -- it is impractical to expect content owners or distributors to adopt a format which involves use fees, dramatically increasing their costs while also burdening them with tracking usage,' said Tom Jacobs, president of ISMA. 'ISMA members have been very concerned that the proposed use fees for MPEG-4 video patent licensing will inhibit the uptake of MPEG-4 among its most important constituents -- the companies that create and/or distribute multimedia content. ISMA strongly supports the MPEG-4 AAC business model. It encourages the use of this important new technology by making it attractive to the content industry, which will in turn promote the sale of products and the success of the MPEG-4 standard'... MPEG-4 AAC is high-quality audio coding technology and the solution of choice for many broadcast and electronic music-distribution applications. Independent tests proved the coding efficiency of MPEG-4 AAC to be superior to MP3, providing higher-quality audio reproduction at lower bit rates. MPEG-4 AAC provides up to 48 channels of audio, sample rates of up to 96 kHz, and can achieve ITU-R broadcast quality at 320 kbps for a 5.1-channel audio program. Developed and standardized within ISO/IEC, MPEG-4 AAC is supported by a growing number of hardware and software manufacturers. "

[March 6, 2002] "Stop. Pay Toll. Download." By Damien Cave. From Salon.com. "Content companies have been working hard to avoid such a scenario and believed that MPEG-4, which supposedly was going to be an 'open' standard, would save them. But MPEG-LA's new plan dashed the hopes of both the content companies and some other industry players. Apple, which had based its next release of the QuickTime media player on MPEG-4 technology, delayed the product's release to protest the terms. 'Everybody was looking forward to getting away from proprietary [compression formulas], then the licensing terms came out,' says Frank Cassanova, director of product marketing for Apple's QuickTime. 'It knocked the wind out of our sails.' [...] So far, the debate over MPEG-4's terms has been limited to only the established players: Real, Microsoft, Apple and the consumer electronics companies that own MPEG-4's patents. But there are also some fast-growing challengers to the big players: open-source software compression formulas in which the underlying code is made publicly available to anyone who wants it. Late last year, for example, a company called On2 open-sourced its VP3 multimedia software, and software developers are also hard at work on at least two other projects that aim to create cheaper, if not completely free, alternatives to MPEG-4 and Real and Microsoft's formats. The debate over MPEG-4 has shaken the market, say experts. And instead of accepting MPEG-LA's expensive terms, or simply staying with the proprietary formats provided by Real, Microsoft and Apple, parts of the multimedia universe might do what the Net has always done best -- route completely around the problem. Emmett Plant is one free software fan who figures that MPEG-4's loss is the open-source movement's gain. The CEO of Xiph -- producers of Ogg Vorbis, an open-source alternative to the MP3 format -- Plant says that the MPEG-4 licensing terms will force developers and the market to give open source a more serious look..."

[February 22, 2002] "On2: Move over, MPEG-4." By Gwendolyn Mariano. From CNET News.com. February 22, 2002. "Video-compression provider On2 Technologies is taking aim at MPEG-4, releasing an update of its own technology, known as VP5, as companies wrangle over proposed licensing fees for the emerging digital video standard... The launch of VP5 comes as media companies are weighing a controversial licensing plan for MPEG-4, a digital media format that is being positioned as a new industry standard. Under the plan, put forward by MPEG LA, licensees would pay 25 cents each for MPEG-4 products such as decoders and encoders, with fees capped at $1 million a year for each licensee. It also suggests charging a per-minute use fee with no cap, equivalent to 2 cents for each hour encoded. Tech heavyweight Apple Computer, a major MPEG-4 backer, quickly rejected the proposed licensing terms, previewing but refusing to release new QuickTime products that support the standard until a new deal is reached. In addition, the Internet Streaming Media Alliance (ISMA), a standards body, is asking MPEG LA to open the proposed licensing plan to industry review and discussion. The ISMA is concerned that the royalty model MPEG LA has outlined will not foster the development of MPEG-4. On2 also opposed the new licensing plan and sent a letter to the ISMA, proposing to make its codec an alternative to MPEG-4 and promising to make it available at no charge. Last year, On2 released an open-source version of its VP3.2 video-compression technology..."

[February 1, 2002] MPEG-4 Licensors Add a 'Use Fee'." By Junko Yoshida. In EE Times (February 1, 2002). "The agency that licenses MPEG-4 video digital compression technology has lowered royalties but imposed an unprecedented 'use fee' for disseminating the video data. MPEG LA LLC, which represents 18 owners of essential MPEG-4 patents, said Thursday (January 31, 2002) that manufacturers of end products like cell phone handsets, set-top boxes and DVD players that feature MPEG-4 video decoding or encoding, either in hardware or software, must pay royalties of 25 cents per decoder or encoder -- up to $1 million per year per legal entity. Those rates are far lower than the current royalty for MPEG-2 video licensing: $2.50 per decoder, encoder or codec. The royalties were reduced recently from $4 per decoder or encoder and $6 per codec. But controversy is expected to swirl around the unprecedented use fee that service providers will be charged..."

On May 3, 1999 the World Wide Web Consortium (W3C) announced that it was "investigating the status of a patent claim which threatens open access to privacy protection technology known as the Platform for Privacy Preferences (P3P). To aid in its investigative efforts, W3C called on the Web Community for help in locating 'prior art,' technology whose existence could be relevant to the validity of the patent..." [from the PR]

W3C's Daniel J. Weitzner testified 2002-04-18 that the P3P and the Intermind Patent issue had been "resolved in a way that enabled widespread adoption of the standard:... The analysis conducted by Barry Rein of Pennie & Edmonds, and made available to both W3C Members and the public, established a reasonable basis for believing that implementers could comply with P3P without infringing the patent. Today, P3P is a W3C Recommendation and widely implemented across the Web."

[April, 1999] "P3P and the Intermind patent. WANTED: When did you first see a technology like this?" From W3C. 1999-04. "Intermind has recently received a U.S. Patent, which it has indicated may be infringed by W3C metadata technologies, including the Platform for Privacy Preferences (P3P). W3C is researching the strength and applicability of this patent, and is looking for help in this process... Intermind's patent is entitled 'Computer-Based Communication System and Method Using Metadata Defining a Control Structure.' Intermind has said that 'The essence of Intermind's top claims are that two nodes -- a sender and receiver -- have persistent storage, communicate over a network, and exchange a control structure defined by metadata (e.g., an XML file) which describes: 1) how to transfer updated information from the publisher to the subscriber, 2) how to transfer feedback information (and updates to that information) from the subscriber to the publisher, and 3) how to process the exchanged information by reference to the control structure. In addition, at least the receiving device must be able to process the metadata using instructions external to the control structure, i.e., process instances of a communications object..."

[October 28, 1999] "World Wide Web Consortium Clears Patent Hurdle for Web Privacy. Patent analysis confirms Platform for Privacy Preferences (P3P) does not infringe Intermind Patent." "Removing a major hurdle to the deployment of privacy-enhancing technology on the Web, the World Wide Web Consortium (W3C) released a legal analysis finding that Platform for Privacy Preferences (P3P) technology does not infringe a patent held by the Intermind Corporation. P3P enables Web sites to inform users of their privacy practices and will give users more control over the use of their personal information on the Web. Widespread deployment of P3P-compliant technologies was threatened when the patent holder sought to charge royalties for products or services using the P3P specification, despite the fact that the technology was developed in an open, collaborative process by a number of W3C Members.During the course of the review, W3C called on the Web community to contribute information that might assist the attorneys in their work. W3C received over 100 substantial technology contributions from technologists all over the world..."

[May 3, 1999] "W3C Seeks Backing Against Patent Claim." By Paul Festa, Special to ZDNet. Reprinted April 12, 2002. "The World Wide Web Consortium today called on members to help fight a patent claim that could derail a developing Web privacy standard. 'Push' technology firm Intermind has long been a thorn in the side of Internet companies involved in so-called push technology, in which information is automatically sent from server to client. Intermind, which was awarded push-related patent 5,862,325 in January, previously has claimed that Microsoft and Netscape Communications, among others, may have to license its technology as a result of its patents. Today the World Wide Web Consortium (W3C), of which Intermind is a member, called on the Web community to pitch in to counter Intermind's push patent. Intermind claims that three W3C standards, one governing the exchange of private information, 'may be related" to its patent claims'..."

On 2004-04-01, MPEG-21 Part 5 was published as an ISO Standard: ISO/IEC 21000-5:2004, Information technology — Multimedia framework (MPEG 21) — Part 5: Rights Expression Language [REL]. ISO MPEG REL defines "an XML-based language for expressing rights related to the use and distribution of digital content as well as access to services." ISO MPEG REL is based upon the proprietary XrML specification owned by ContentGuard. According to a June 01, 2004 message posted to the Atom-Syntax mailing list, ContentGuard believes "products or systems that implement either of the [XrML or ISO MPEG REL] specifications may infringe one or more of ContentGuard's patents and will need a patent license from us." Concrete discussions about license fees payable to ContentGuard "usually entail signing an NDA [non-disclosure agreement] before discussing actual fee structures." See the memo posted by Asbjørn Ulsberg, quoting Rajan Samtani (Director, Sales & Marketing, CONTENTGUARD, Inc.) in response to an inquiry about ContentGuard's XrML patents.

[How] do ContentGuard's patent claims pose a substantial threat to the freedom of information in the Internet context? Interested readers should consider the following data, seeking to understand the combined significance. See also the analysis which follows items 1-5.

ContentGuard earlier [2000] offered royalty-free licensing of XrML, but in more recent statements [2002] has been promising "reasonable and non-discriminatory [RAND] terms and conditions" [*]

Analysis of ContentGuard's Claims

If Xerox and Microsoft can succeed in a legal defense of ContentGuard's patent claims, and succeed in having XrML (and derivatives) incorporated into a significant proportion of Internet "trust" transactions under RAND royalty/licensing terms, the Internet will be profoundly changed -- to the severe detriment of the average user/consumer. Under that scenario, the analysis of Leslie Gornstein in Online Journalism Review may prove to be correct: "the information you get over your laptop, Palm or pen probably won't be free. And if it is free to peek at, you probably won't be able to copy and paste it, print it, look at it a second time, or store it on your hard drive in any way -- unless you pay for the privilege... What's scary about DRM is that there's nothing built into the forthcoming rights protection software that protects consumers' rights under fair use laws -- the same laws that allow people to tape their favorite TV shows. But [ContentGuard CEO Michael] Miron says assuring such rights is too much of a burden for his [ContentGuard] software team, arguing that every country has different intellectual property laws..."

Whether the XeroxPARC/ContentGuard claims to have "invented the rights expression language concept" will withstand legal challenge is as yet (?) undetermined. Who knows what will happen once a public appeal has been issued for revelation of prior art, as was done in the case of P3P and the Intermind patent. From casual, non-legal investigation of the ContentGuard 'Sturdy Patent Portfolio' and a not-so-casual investigation of the early history of markup (1970s, 1980s), one could conclude that the notions granted "invention" and "US patent" status were ideas obvious to almost everyone who thought about and published on (GenCode, SGML) markup in the earliest years. The important pioneering work of Mark Stefik notwithstanding, one may question whether the ContentGuard claims would hold up under a worldwide concerted effort to legally overthrow them; see for example these US patents: #6,236,971 [November 10, 1997; May 22, 2001]; #5,638,443 [November 23, 1994; June 10, 1997] #5,634,012 [November 23, 1994, May 27, 1997]; #5,715,403 [November 23, 1994; February 3, 1998]; #5,629,980 [November 23, 1994; May 13, 1997].

Readers need to understand the significance of ContentGuard's "contribution" (also called "submission") of the XrML specification to OASIS, MPEG-21, TV-Anytime (and potentially to "any standards organization seeking a Rights Language"). This act surrenders nothing of critical importance, though it can serve to deceive. While the "contribution" of the XrML specification to the OASIS TC process opens up future development of XrML to (potentially) a wider body of critical opinion, the submission itself does not diminish the public threat from ContentGuard's patented IP. As the ebXML community learned recently, donating the draft specification and donating the IPR are two different things. Because ContentGuard believes it has patents relevant to "any rights language," there is no potential risk in "offering" the specification to multiple standards organizations. For little or no effort/cost, putting XrML into play broadly within standards work can represent a few well-spent marketing dollars for XrML: visibility, prestige, legitimacy, international approval, and ubiquity. ContentGuard seems to have (?) elected OASIS as the principal custodian for XrML-TNG, but how the OASIS "standard" actually turns out in technical terms vis-à-visMPEG-21 REL and XrML Version 2.0 could be inconsequential from ContentGuard's point of view. So long as XrML delivered into the hands of multiple standards bodies is conceived and characterized as a "rights language" or "rights expression language," ContentGuard can take this position: "The DTD/schema/code for XrML 2.0 can diverge (fork) in several ways under the requirements of the various standards organizations using XrML as a (contributed) basis for their rights language; XrML does not even need to survive as the official name; so long as the relevance of ContentGuard patents is sustained in all standards environments, the effective monopoly of ContentGuard on DRM is achieved."

Most people see this plainly; Bill Rosenblatt's article in "DRM Watch Update" (April 02, 2002) serves as an example: "ContentGuard is able to relinquish control of OASIS' rights language design while retaining the ability to charge for licenses to the language. ContentGuard can do this because it holds patents on any rights language, not just XrML as it exists today. OASIS, unlike other standards bodies (such as the W3C), allows companies like ContentGuard to contribute technology that can be licensed for money, as long as it's on RAND (reasonable and nondiscriminatory) terms... ContentGuard's patents allow it to take legal action against other organizations that would advance their own rights language. As another important step towards market acceptance, ContentGuard will need to assure the industry that it does not intend to use its patent portfolio as a stick with which to beat other organizations. Only the passage of time will provide this assurance..." [DRM Standards. GiantSteps/Media Technology Strategies]

Contrariwise, a document sponsored by ContentGuard recently addressed the XrML patent issues in this manner:

"There are some concerns about XrML being the intellectual property of ContentGuard, and not yet being managed by an independent standards body. However, ContentGuard has made clear its intent to turn XrML over to an independent standards body and make their patents, if needed to implement a system using XrML, available under 'Reasonable and Nondiscriminatory' terms. Furthermore, they have recently announced their involvement with OASIS by chairing a new OASIS technical committee, The OASIS Rights Language Technical Committee, and will contribute XrML to this committee. With those two things in place, the question of XrML becoming the standard should rest on its merits as a rights expression language." [See: "Rights management and the new infrastructure for truly dynamic product development for publishers of all kinds." White Paper sponsored by ContentGuard, written by Bill Trippe for The Gilbane Report; April 23, 2002.]

In this text, ContentGuard seems to suggest that the promise of RAND and the "contribution" of the XrML specification to an OASIS TC should eliminate public "concerns" about the patents. To the contrary: RAND implies a license to exact tariffs on a global scale, and "submission" to OASIS may imply eventual conferral of a "standards" seal of approval and legitimacy upon a legally encumbered specification. Thoughtful people will not be fooled by this kind of language.

ContentGuard's attempt to position XrML as a "single extensible rights language standard" with broad applicability to Internet domains in which transactions need to be governed by "rights and conditions in any part of a value chain" may be viewed positively or negatively. Interoperable computing solutions are good. Monopolistic control of DRM transactions on a universal scale backed by RAND royalty fees is not good, and rightfully will be opposed. There is a certain appeal to the notion of a markup-based rights/security/permission framework applied to digital content from its inception (authoring) through editing and distribution; there is likewise a certain appeal to the notion of a DRM framework applicable to all of web services, "financial services [portfolio analysis, real time video, on-line consulting, research reports], metadata, content management, content delivery and distribution, and access control, security services, ebooks, digital publishing, digital broadcasting, music, video, digital cinema, digital TV, and all other content/media types." But attaching a micro-penny royalty fee to every metered transaction (payable to ContentGuard) has little appeal. As Len Bullard observed: "Business will not accept tollbooths on business transactions." As Lawrence Lessig and other legal experts have warned, this kind of monopolistic control embedded into the foundations of Internet "code" would constitute a serious threat to the freedom of information. Competitive efforts will be launched to answer this RAND monopoly threat -- to oppose and neutralize the (proposed) universal relevance of ContentGuard's patented (XrML) DRM technologies.

The ContentGuard promise to license XrML and related standards under RAND terms and conditions should not be viewed as a comforting statement. We present elsewhere some arguments against RAND in the context of foundational Internet services based upon open standards.

Sources for ContentGuard Patent Statements

Note: The goal here is to ensure that no statement reproduced here is taken out of context so as to be misleading or otherwise to misrepresent any authorial intent; the reader should examine all original contexts.

See ContentGuard - Driving The Standard With XrML" - "Based on years of research at Xerox Palo Alto Research Center (PARC), which invented the Digital Rights Language concept, XrML is currently the only Rights Language being used in working DRM solutions, including DRM solutions from Microsoft..." [text as of 2002-05-09]

The document "ContentGuard Patent Licensing Options" [as of 2002-05-09] asserts: "ContentGuard has an important and early foundation patent portfolio pertaining to the distribution of digital works and to any rights language. These United States issued patents have also been filed in Japan, Europe and other countries. They contain broad fundamental claims covering: (1) Association of usage rights to content. (2) A grammar to define rights or conditions. (3) Persistent protection. (4) Distribution of composite digital content. (5) Fee accounting and reporting associated with the distribution or use of content." [Note the emphasized word any in the quoted text; numbers (1-5) have been added here for inline display of the five items in the unordered list.]

ContentGuard is able to relinquish control of OASIS' rights language design while retaining the ability to charge for licenses to the language. ContentGuard can do this because it holds patents on any rights language, not just XrML as it exists today... Cited in a ContentGuard Reprint from DRM Watch (April 02, 2002).

In response to the published "ContentGuard OASIS RL TC Intellectual Property Disclosure" of May 21, 2002, Mairéad Martin posted a query to the RIGHTS-L forum: "I haven't read the patents in question but wondered what the infringement through 'use of a rights expression language ... to implement digital rights management technologies' entails? Surely this doesn't refer to all rights languages? Would anyone from ContentGuard or involved in the OASIS Rights Language effort care to comment?" Brad Gandee of ContentGuard responded: 'You asked: Surely this doesn't refer to all rights languages? Answer: Yes the patents are not specific to XrML. In fact, the patents were filed and granted before XrML even existed...' See the posting [cache].

See also any rights language, whether XrML or not in the quoted statement from ContentGuard CEO Michael Miron.

From Standards Bodies [text as of 2002-05-09]: "... Some of the areas of technological standards work into which we expect to submit XrML for consideration would be in DRM, Metadata, Content Management, Content Delivery and Distribution, and Access Control/Security Services. We have also strived very hard to maintain a broad scope of applicability for XrML with respect to media type. The content 'products' of the future will be collections of many types of content in many forms. Text will be combined with graphics, streamed video/audio, and subscription-based content available from a particular network resource or web service. Because of this confluence of content types we expect to submit XrML for consideration as the Rights Management Language in standards efforts in the areas of eBooks, digital publishing, digital broadcasting, music, video, digital cinema, digital TV, and all other content/media types..."

From the 2002-04-03 announcement: "... XrML is a general-purpose rights language, agnostic to the type of resource, platform, media or business applications. The latest release, XrML 2.0, expands the capabilities of a Digital Rights Language to enable developers to establish the rights and conditions needed to access Web Services in addition to discrete digital content. It also contains additional capabilities in the areas of extensibility, security and life cycle management..."

January 2001. "ContentGuard Position Paper for W3C DRM Workshop." Workshop 22-23 January 2001. "ContentGuard develops DRM technology and solutions and has a number of active customers that have implemented our technology and deployed our solutions as part of their digital content business initiative. ContentGuard has also developed and licenses, on a royalty-free basis, XrML, eXtensible rights Mark-up Language in order to enable the digital content marketplace."

March 2002. Rights Language Technical Committee Proposal': "ContentGuard will submit the eXtensible rights Markup Language (XrML) Version 2.0 at the initial meeting of the TC. ContentGuard's contribution will be submitted with the following intellectual property rights statement: 'ContentGuard agrees to offer a license, on reasonable and nondiscriminatory terms, to use any patent claim of US Patents 5,638,443, 5,634,012, 5,715,403, and 5,629,980 and which is necessarily infringed by the use of the contribution'."

April 02, 2002. "ContentGuard Turns XrML Over to OASIS." By [Seybold Bulletin Staff.] In The Bulletin: Seybold News and Views on Electronic Publishing Volume 7, Number 26 (April 3, 2002). "ContentGuard has found a new home for its XrML rights specification language: the OASIS vendor consortium. The recently formed Rights Language technical committee of OASIS will draft a rights language specification using XrML as the initial submission. Initial members of the technical committee include Hewlett-Packard, Microsoft, Reuters and Verisign, in addition to ContentGuard... According to Bruce Gitlin, ContentGuard's VP of business development and its representative on the OASIS committee, the plan is to develop a core specification, with extensions handling media- and market-specific requirements. This is the same approach taken by MPEG, which recently adopted XrML as its rights specification language... According to Gitlin, because ContentGuard's patent covers any rights language, not just XrML, ContentGuard expects to extract license fees from vendors implementing whatever rights language emerges from OASIS' standards process. The terms and conditions of the license will depend on the implementation, and ContentGuard has pledged that it will license XrML to other vendors under reasonable and nondiscriminatory terms..."

April 03, 2002. From the article of Kevin Murphy (Yahoo News UK), April 03, 2002: "'Among our patents is the use of any rights language, whether XrML or not,' said Miron, adding that the company has already committed to RAND licensing terms, and that ContentGuard already offers risk-free licenses for developers of DRM applications. 'We propose to license our patents to anybody for free... for development purposes only,' said Miron. 'When you go to market for commercial purposes, then you pay us a license fee'..."

May 2002. From [2002-05 display text] 'Patent Licensing Options': "...To enable the industry use of the functionality and power of XrML, ContentGuard is licensing the necessary patents that enable you to deploy applications based on XrML. ContentGuard is licensing these patents throughout the world on reasonable and non-discriminatory terms and conditions..."

U.S. Patent No. 5860073 appears to include key concepts used in W3C's Cascading Style Sheets (CSS) and eXtensible Style Language (XSL) standards, which could potentially require these currently-open standards to be licensed from Microsoft.

If the CSS and XSL standards are in fact covered by the patent, WaSP believes Microsoft, which participated in W3C's development of these standards, should immediately take legal steps to ensure these Web standards remain openly available on a nondiscriminatory basis, assuming that it has not already done so.

This could include turning over the patent to W3C, or other legal licensing agreements that irrevocably protect these open standards, WaSP also called on any other companies that may be pursuing other patents that affect W3C standards to take similar measures.

The patent application was filed in 1995 as the W3C deliberations on the CSS standards began. While Microsoft representatives to W3C may have been unaware of the patent effort, the patent application itself refers to W3C's efforts, which WaSP believes means that Microsoft as an applicant was aware of the issue and should have disclosed its patent effort to W3C. [...]

[April 18, 2002] W3C's Daniel J. Weitzner testified 2002-04-18 that the Microsoft Style Sheet Patent issue had been "resolved in a way that enabled widespread adoption of the standard: ... During the development of W3C's style sheet specifications, Microsoft announced that it had been issued a patent (US Patent #5860073) which might cover W3C's Cascading Style Sheet (CSS) Recommendations. Microsoft was a participant in various W3C style sheet activities and quickly offered royalty-free licenses to W3C members in order to assure that implementation of this standard would proceed."

On December 6, 2000 Sun published "XPointer patent terms and conditions" which fairly rocked the W3C XLink/XPointer development community. The opening statement in the 'TERMS AND CONDITIONS' is shocking (as relevant to a W3C specification) even if one reads no further: "By receiving and/or implementing the XPointer Specification, You acknowledge and agree to be bound by the following terms and conditions:" Other statements read (in part) "The term of this Agreement shall begin on the date that You download or otherwise receive the XPointer Specification and shall extend through the last date on which a Patent expires... In no event shall Sun or You be obligated to extend the covenant not to sue granted hereunder to any product not incorporating a fully compliant implementation of the XPointer Specification... You agree to provide documentation of any Modification to W3C no later than the first date on which such Modification is made available to others, including but not limited to the first date on which such Modification is made available to others through alpha distributions or distributions under obligations of confidentiality..."

The patent at issue was United States Patent number 5,659,729 [use number search], with application #595477, filed February 1, 1996 in the name of Jakob Nielsen. The abstract reads: "Embodiments of the present invention use a new extension to the HTML language to support remotely specified named anchors. A remotely specified named anchor, when embedded within a source document, instructs a browser program to access a portion of a destination document indicated in the remotely specified named anchor. When the browser program reads a remotely specified named anchor such as <a href=http://foo.com/bar.html/SCROLL="Some Text"> from the source document, the browser program performs the following steps: 1) the browser retrieves the destination file 'bar.html' from the server 'foo.com', 2) the browser searches the file bar.html for 'Some Text', and 3) if the browser finds the character swing being searched for, then the browser displays the file bar.html, scrolled to the line containing the first character of the character string being searched for."

W3C's Daniel J. Weitzner testified 2002-04-18 that the Sun XPointer/XLink Patent issue had been "resolved in a way that enabled widespread adoption of the standard: ... A patent (US Patent #5659729) on technologies relevant to the XLink specification was disclosed by Sun during the process of developing the XLink specification. Though there was not a clear model for Royalty-Free licensing in W3C, Sun worked to develop a license that would enable Royalty-Free implementation of this standard."

Sun IPR statement on XPointer. Posted to XML-DEV by Eve L. Maler on 24-April-2001. It reads in part: "Sun Microsystems, Inc. ('Sun') agrees it will grant royalty-free licenses, under reasonable terms and conditions, and on a non-discriminatory basis, under Sun's essential patent claims to make, use, sell, offer for sale, or import implementations of XPointer. One precondition of any license granted to a party shall be the party's agreement to grant royalty-free licenses to Sun and other companies to make, use, sell, offer for sale, or import implementations of XPointer under the party's essential patent claims. Sun expressly reserves all other rights it may have..." Note that this statement was intended to correct and supersede the previous Sun IPR statement (which created the public debate). [source]

The patent itself is/was widely perceived to be unsustainable. See for example the April 25, 2001 posting "Sun IPR Statement on XPointer," written by [Dr.] Steve DeRose (Brown University Scholarly Technology Group; also W3C Editor, XML Linking Language [XLink] Version 1.0 = W3C Recommendation 27-June-2001; also W3C Editor, XML Pointer Language (XPointer) Version 1.0, = W3C Candidate Recommendation 11-September-2001). Re: the comment/opinion of Len Bullard, viz., "Sun believes it can defend the [XPointer] patent..." [Steve writes:] "Actually, if their technical people have clue 1, they cannot believe this. I suspect what they believe is what you said later, that no one will bother fighting them. The patent is so utterly bogus there's not the faintest chance they could defend it against a halfway competent attack. I personally implemented 3 [three] systems, each at least 3 [three] years prior to their application, that 'infringe' it. If you read the patent broadly enough for XPointer to infringe, then HTML infringes it as well. Sun is clearly counting on not having to fight it (sadly, given the way patent law is set up, that's a good bet -- the reason we have myriad patents this foolish)..." Local commentary: Steve DeRose and Eve Maler (Eve sought to recuse herself in the Sun/W3C context) are both eminently wonderful and smart people, and both are editors of the W3C XLink Recommendation. This leads me to conclude that Eve, forced (unfortunately for her) into the role of messenger for Sun legal department, was simply conveying messages she was politically obligated to convey. Few people in the world, bar none, have as much knowledge of "hypertext linking" as Dr. Steve DeRose. His locution utterly bogus as predicated of the putative Sun patent, unless uttered irresponsibly, leads me to conclude that Sun's legal department, exercising inordinate power, as is commonplace for legal departments in US companies, ruled on a matter out of scope and beyond its sphere of technical competence [a general problem of knowledge specialization, and a special problem of US companies]. US companies seem prone to do what their powerful legal departments tell them they are obligated to do: "make extravagent and overreaching claims, even outrageous claims, thereby putting the onus upon competitors to dislodge the assertions..." Good people like Eve and Steve are unfairly caught in the crossfire.

Other references:

[January 12, 2001] "White Hat Patents." By Len Bullard. "Patent licensing is an extremely lucrative business. Don't be naive here. They don't do this for the pride of holding patents. We have to take this very seriously. We are being drawn toward an event horizon of a black hole of singular patents that can paralyze the evolution of infrastructure of the Internet for decades. This is very real, very bad, and must be propagated to as many lists where technical discussions are held quickly. Sun may be asserting what they consider to be a valid patent. Que bueno. We know for a fact there is prior art. We know the patent covers a vital part of the web document design. This must be overturned and a case made clear both to corporations and individuals that work for these corporations that pursuing such patents will face patient and persistent opposition and may cost them considerable business. It has to stop. The [US] Patent Office can no longer be counted on to be the control. As the American elections just dramatically proved, American institutions for regulation and selection often come down to political controls. In such a situation, as the Web is an international utility, larger institutions must be able to intervene. As their is no governing body and the force of financial resource is governing by default, we have no choice but to go to the streets and insist that corporations abide by community, not commercial, interests."

[January 9, 2001] "(Second) Last Call for XPointer 1.0." By Elliotte Rusty Harold. Post to XML-DEV. "... It's very questionable whether this is truly an original invention with no prior art. HyperCard and Xanadu both had capabilities like this. It's also questionable whether the patent as written really applies to XPointer. For instance, the patent mandates a certain behavior of browsers. XPointer doesn't. I also think that the proposed 'XPointer patent terms and conditions' are unenforceable as currently published. I recommend complete rejection of this specification until such time as Sun's patent can be dealt with more reasonably..." See also the followup by Uche Ogbuji.

[March 11, 2005] Innovation and Its Discontents: How Our Broken Patent System is Endangering Innovation and Progress, and What to Do About It. [Abstract for book] By Adam B. Jaffe and Josh Lerner. Princeton University Press, 2004. ISBN: 0-691-11725-X. The Introduction "They Fixed It, And Now It's Broke" is available online. See also the TOC and endorsements. "The United States patent system has become sand rather than lubricant in the wheels of American progress. Such is the premise behind this provocative and timely book by two of the nation's leading experts on patents and economic innovation. New laws have made it easier for businesses and inventors to secure patents on products of all kinds, and the laws have tilted the table to favor patent holders, no matter how tenuous their claims... We find ourselves where we are today because the institutional changes of the last two decades have altered the incentives of inventors, firms, and the patent office in ways that encourage legal maneuvering and discourage innovation. The solution is to understand how these perverse incentives work, and to modify patent procedures and policy to restore the incentives for socially desirable behavior... After analyzing the economic incentives created by the current policies, Jaffe and Lerner suggest a three-pronged solution for restoring the patent system: create incentives to motivate parties who have information about the novelty of a patent; provide multiple levels of patent review; and replace juries with judges and special masters to preside over certain aspects of infringement cases... When issues of patent policy are considered by the courts, the Congress, and the Executive branch, you can be sure that the opinions of patent lawyers and patent holders will be heard. While their arguments will often be couched in terms of the public interest, at bottom their interest is in their own profits and livelihoods, not in designing a patent system that fosters the overall rate of innovation. Even the PTO itself cannot be expected to advocate necessary reform, if such reform reduces its revenues (by discouraging bogus applications) and threatens its established mode of operation. Yet the long-term well-being of everyone depends on a robust innovation system, and patents play a crucial role in that system..."

[April 15, 2004] Ideas Into Action: Implementing Reporm of the Patent System. "On April 15-16, 2004 the Berkeley Center for Law and Technology (BCLT) held a major policy event. Along with the Federal Trade Commission (FTC) and the National Academy of Sciences, BCLT brought together scholars, lawyers, and policy-makers to discuss both the substance of patent reform and how it might be implemented. Join government officials, judges, academics, lawyers, and industry representatives convened to discuss the most significant recommendations made in the two reports [FTC and NAS] and decide where to go from here. The conference featured presentations of the FTC and NAS reports, keynote speeches, and a roundtable of industry leaders. The conference also included substantive debates on several key reform proposals: changes to the obviousness standard, proposals for opposition and post-grant review, and changes to litigation rules..."

"It was announced by FTC Commissioner Mozelle Thompson at the close of the conference on Friday [April 16, 2004] that a new technology industry group would begin working on making the patent systent more responsive to technological innovation. Cisco, Intel, eBay, Symantec, Chiron, Microsoft, and Genentech agreed to work with regulators and legislators on patent reform..." [from the BCLT Events page]

[November 11, 2003]US Federal Trade Commission Report Calls for Patent Law and Policy Reform. Several conclusions and recommendations on software patent reform published in the FTC's recent report seek to restore a proper balance of interests between competition and current patent policy. The 315-page report summarizes the results of extensive Hearings held by the US Federal Trade Commission and the DOJ during 2002. "The Hearings took place over 24 days, and involved more than 300 panelists, including business representatives from large and small firms, and the independent inventor community; leading patent and antitrust organizations; leading antitrust and patent practitioners; and leading scholars in economics and antitrust and patent law. In addition, the FTC received about 100 written submissions." The FTC report observes that questionable patents can deter or raise the costs of innovation, and that in industries with incremental innovation such as computer hardware and software, questionable patents can increase 'defensive patenting' and licensing complications, "creating a 'patent thicket' of overlapping intellectual property rights that a company must hack its way through in order to actually commercialize new technology." The FTC recommends the creation of a new administrative procedure "that will make it easier for firms to challenge a patent's validity at the US Patent and Trademark Office (PTO), without having to raise an expensive and time-consuming federal court challenge. It also recommends allowing courts to find patents invalid based on the mere preponderance of the evidence, without having to find that clear and convincing evidence compels that result. The current standard of 'clear and convincing evidence' undermines courts' ability to weed out questionable patents. This is especially troubling, since certain PTO procedures and rules tend to favor the issuance of patents. The FTC recommends tightening certain legal standards used to evaluate whether a patent is 'obvious'. In appropriate circumstances, the FTC will ask the PTO Director to reexamine questionable patents that raise competitive concerns."

[October 28, 2003] "FTC Issues Report on How to Promote Innovation Through Balancing Competition with Patent Law and Policy." - "The Federal Trade Commission today issued its report on how to promote innovation by finding the proper balance of competition and patent law and policy. Although both competition in markets and patents for inventors can work together to foster innovation, the report states that each policy requires a proper balance with the other to do so. 'Consumers and innovators win when patents and competition policy are aligned in the proper balance. Although questionable patents can harm competition and innovation, valid patents work well with competition to promote innovation. This Report analyzes and makes recommendations for the patent system to maintain the proper balance with competition,' said Timothy J. Muris, FTC Chairman. Today's report -- which makes recommendations for the patent system -- is the first of two reports about how to maintain that balance. A forthcoming second report by the FTC and the Antitrust Division of the Department of Justice (DOJ) will make similar recommendations for antitrust law. Among the ten recommendations of today's report, the FTC proposes legislative and regulatory changes to improve patent quality. Patents of questionable validity can slow further innovation and raise costs to consumers. Specifically, the report recommends: (1) Creating a new administrative procedure that will make it easier for firms to challenge a patent's validity at the U.S. Patent and Trademark Office (PTO), without having to raise an expensive and time-consuming federal court challenge; (2) Allowing courts to find patents invalid based on the preponderance of the evidence, without having to find that clear and convincing evidence compels that result. The current standard of 'clear and convincing evidence' undermines courts' ability to weed out questionable patents. This is especially troubling, since certain PTO procedures and rules tend to favor the issuance of patents. The report also recommends that Congress limit the award of treble damages for willful patent infringement. Some hearings participants explained that they do not read their competitors' patents because of concern that learning about others' innovations will expose them to treble damages infringement liability. Failure to read competitors' patents, however, can harm innovation and competition. The FTC's recommended legislative change would allow firms to read patents to learn about new innovations and to survey the patent landscape to assess potential infringement issues, yet would retain a viable willfulness doctrine that protects both wronged patentees and competition..."

"TAF Special Report: All Patents, All Types." A Technology Assessment and Forecast Report. January 1977 -- December 2001. US Patent and Trademark Office (USPTO). On the rapid rise of patent applications/grants, see the references following.

"Search 500,000 Documents, Review 160,000 Pages In 20 Hours, And Then Do It All Over Again. The detailed life of a patent examiner." By Quentin Hardy. In Forbes ASAP [Forbes.com] (June 24, 2002). Hardy supplies some metrics: "The U.S. Patent and Trademark Office (USPTO) receives 2 million documents yearly, including 375,000 applications, amendments to existing claims, and pleas for consideration or appeals for reconsideration. Those join more than 190,000 patents that will be granted this year, in regular announcements each Tuesday. Every one of the new and pending claimants wants attention now; the cramped and frantic postal facility, occupying one of 18 USPTO buildings dispersed over a one-mile swath in Crystal City, Virginia, is the world's largest recipient of Express Mail... To that urgency add a dizzying increase in complexity of new claims. A typical patent is now about 20 to 40 pages, up from the single-page descriptions of 1790, when Thomas Jefferson and two friends met monthly as America's first patent examiners (approving three inventions that year, the first for converting wood ashes into farm fertilizer). Some biotechnology patents now carry 160,000 pages of information... 'We get CDs now containing the equivalent of 72,000 pages. The number and fundamental complexity of our patents are becoming too great.' In the 1980s, efficiency was improved, he says, cutting the wait time from filing to approval from 25 months to 18 months. But the wait has crept back to more than 24 months... Not only did the annual growth rate of the number of applications expand from 8% in the 1990s to 12% in 2000 and 2001, applications for complex biotech patents have jumped 24% during the past two years. Electrical-technologies applications have risen even higher..."

"Competition and Intellectual Property Policy: The Way Ahead." [An excerpt from] the presentation by Timothy J. Muris (Chairman, US Federal Trade Commission) made before the American Bar Association, Antitrust Section Fall Forum. Washington, DC; November 15, 2001. "...in recent years, the number of patents issued annually by the Patent and Trademark Office ('PTO') has increased substantially. In 1980, for example, the PTO issued roughly 66,000 patents. Twenty years later, the number had increased more than two and a half times to over 175,000. Commentators have suggested many explanations for this increase, including the growth in innovation spurred by changes in the management of research; the need for companies to protect themselves against infringement suits with blocking patents; the increased consciousness among the business community of the financial gains to be achieved through patent mining; and creation of the Federal Circuit. Regardless of the reasons underlying this increase, we should consider whether there are implications for innovation and competition. On the one hand, some observers believe that this patent explosion could injure competition by making it more difficult for rival inventors to sell competing products. According to Professor Carl Shapiro, a 'patent thicket' has formed... Firms in certain industries are said to fear that it is 'all too easy' to infringe another patent accidentally and thereby risk liability..."

"Intellectual Property Rights and Standard Setting Organizations." By Mark A. Lemley (Professor of Law, Boalt Hall, University of California, Berkeley ). Paper prepared for the Session "Standard-Setting Practices: Competition, Innovation and Consumer Welfare," April 18, 2002, at the 118 pages, 341 notes. In pages 98ff, Lemley discusses "Optimizing SSO IP Rules: Implications for Organizations and Members," offering several suggestions that will help SSOs clarify their rules and make them fairer. A fifth suggestion (pages 109-111) discusses how RAND licensing might be improved to better serve its goals. See: '5. Give content to the "reasonable and nondiscriminatory licensing" requirement.' "[...] It is all well and good to propose that SSOs require licensing on reasonable and nondiscriminatory ('RAND') terms. But without some idea of what those terms are, RAND licensing can easily be rendered meaningless. Virtually no SSOs specify the terms on which licenses must be granted beyond the vague requirement that they be 'reasonable' and 'nondiscriminatory.' Indeed, some organizations expressly forbid discussion of such issues when a standard is under consideration! [Understanding Patent Issues During IEEE Standards Development] And private licenses are normally confidential. [n#320] The result is uncertainty over the cost and scope of patent licenses that may not prove much better than having no policy at all. [n#321: 'Not surprisingly, members have begun to litigate the reasonableness of royalty rates set in the standards context.'] [cache]

"Antitrust Limits to Patent Settlements." By Carl Shapiro. May 2001. "... The increasing importance and number of patents and copyrights inevitably is leading to more and more intellectual property disputes between rights holders and alleged infringers. In fact, since many products can potentially infringe multiple patents, the number of disputes, or the number of licenses needed to resolve those disputes, can easily grow more than proportionately with the number of patents..."

"In several key industries, including semiconductors, biotechnology, computer software, and the Internet, our patent system is creating a patent thicket: an overlapping set of patent rights requiring that those seeking to commercialize new technology obtain licenses from multiple patentees. The patent thicket is especially thorny when combined with the risk of hold-up, namely the danger that new products will inadvertently infringe on patents issued after these products were designed. The need to navigate the patent thicket and hold-up is especially pronounced in industries such as telecommunications and computing in which formal standard-setting is a core part of bringing new technologies to market. Cross-licenses and patent pools are two natural and effective methods used by market participants to cut through the patent thicket, but each involves some transaction costs...

"...Our current patent system is causing a potentially dangerous situation in several fields, including biotechnology, semiconductors, computer software, and e-commerce in which a wouldbe entrepreneur or innovator may face a barrage of infringement actions that it must overcome to bring its product or service to market. In other words, we are in danger of creasing significant transactions costs for those seeking to commercialize new technology based on multiple patents, overlapping rights, and hold-up problems. Under these circumstances, it is fair to ask whether the pendulum has swung too far in the direction of strong patent rights, ranging from the standards used at the Patent and Trademark Office for approving patent applications, to the secrecy of such applications, to the presumption afforded by the courts to patent validity, to the right of patent holders to seek injunctive relief by insisting that infringing firms cease production of the offending products. Under these circumstances, we can ill afford to further raise transactions costs by making it difficult patentees possessing complementary and potentially blocking patents to coordinate to engage in cross-licensing, package licensing, or to form patent pools. Yet antitrust law can potentially play such a counterproductive role, especially since antitrust jurisprudence starts with a hostility towards cooperation among horizontal rivals..."

["What's a best [technical] solution?"] From "Patents and Standard-Setting Processes," a statement of Scott K. Peterson (Hewlett-Packard Company) for FTC/DOJ Hearings on Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy. April 18, 2002: "... consider a circumstance where a consortium is developing what is expected to be a critically important standard that defines the infrastructure for a whole array of next-generation products that all consortium members and other parties as well need to develop to remain in the affected market space. One consortium member promotes specifications based on technology that it has patented and the patent is appropriately disclosed during the process. Other consortium members see technical benefits to those specifications but also recognize alternative approaches that would entail countervailing benefits as well as avoiding any need for users to obtain patent licenses. The patent holder's proposal might be considered the 'best technical solution' but that does not necessarily make it the 'best solution' when the overriding objective is a standard that ensures a level playing field and robust competition in the new market that the standard is designed to foster. A standard that enables one user to extract exorbitant royalties from all other users could, in this light, be the 'best technical solution' but not by a long shot the 'best solution' either for the industry generally or from the broader standpoint of the public interest..."

"All [W3C] Recommendations should be royalty-free." October 01, 2001. By James Clark, commenting on the early W3C draft "W3C Patent Policy Framework" (W3C Working Draft 16-August-2001). "...Non-RF standards would have a devastating impact on open-source software, which has historically been very important in the development of the Web. I also believe that such a [RAND] policy would further weaken respect for the W3C as an institution and would tend to promote the perception that the W3C is a tool of its corporate paymasters rather than an organization that is trying to do the right thing, whether morally or technically."

"Policy vs. mechanism." September 30, 2001. By Tim Bray (CEO, Antarcti.ca Systems). "... Is it a policy goal that W3C recommendations remain free of intellectual-property encumbrance? I think this decision ought to be 'yes'... I certainly will neither recommend the use of, nor work on implementations of, any W3C recommendation the use of which may involve liability for patent royalties..." From Tim's subsequent posting of October 11, 2001: "If IPR issues come to light and the IPR holder is not prepared to grant RF rights, W3C WGs should make efforts to the technical content of their work to avoid infringing on those IP Rights in their eventual Recommendation... If it is neither possible to obtain RF implementation rights nor to work around the IPR issues, the W3C should make a determination that the area of work in question is not suitable for inclusion in the part of the Web infrastructure that the W3C is charged with building and enhancing, and cease the work in question..."

"Patent-free standards." October 02, 2001. By John Nagle (Menlo Park, CA), via Matthew Rubenstein. "I own and make money from software patents. But not from the Web, even though my unpatented 'Nagle algorithm' is in every TCP implementation in the world. Patented technology should not be in standardized interfaces. It inhibits their adoption and causes the technology base to fork. That makes the 'standard' non-standard..."

"I say 'NO!' to RAND." October 30, 2001. By Richard E. Brown (Dartware, LLC). "[I am] the president of a small software company... allowing patents into international standards hurts small companies... I probably spent a total of two weeks on the decision to avoid the use of GIFs. Had we been required by circumstances (or the presence of a W3C Requirement) to use a patented techology, we would have required another 2-4 weeks to negotiate a license, and would in perpetuity have paid the license fee, along with the additional expense of whatever reporting conditions might have been required by the licensor. Even if the GIF patent had been available under 'reasonable and non-discriminatory' guidelines with published pricing, it isn't clear that we would have chosen to use it. 'Reasonable' is in the eyes of the beholder. Althought a 1 cent per copy license might be considered affordable, the reporting expenses would dwarf the licensing costs..."

"RF Only, Please." October 01, 2001. By Bruce Perens (co-founder of the Open Source Initiative). "It's too early to capitulate by saying that RF standards may not always 'be possible' for W3C and that RAND is desirable. The very history of the Web and the Internet contradict this... W3C's duty is to push back against those who would close the web. Insisting on RF standards is an essential component to doing so."

"RAND at W3C Would Reinforce Global Inequity." October 8, 2001. By Rick Jelliffe (C.T.O. Topologi Pty. Ltd., Sydney, Australia). "We in the West should not underestimate the extent of the antipathy in non-Western countries caused by apparently discriminatory practices of Western organizations. It is a common view that the US IPR system has spun ludicrously out-of-control, especially for patents; the W3C should avoid hitching it and the WWW's direction to RAND... The W3C should not become a marketing center or revenue stream for rich Western companies..."

"W3C patent policy." September 30, 2001. By Eben Moglen (Professor of Law, Columbia Law School). "Without free software, the web would be a commercialized outgrowth of a few proprietary software producers, and it would be incapable of serving, as it now does, as a force for global egalitarianism... 'Reasonable and non-discriminatory' licensing of patented technology embodied in W3C standards will eliminate free software production from any area of Web facilities subject to those standards."

"SoftQuad Software's Comments on The Patent Policy." October 11, 2001. By Lauren Wood (Director of Product Technology and AC Rep., SoftQuad Software), on behalf of SoftQuad Software. "We believe that W3C patent and licensing policy should support the W3C mission of bringing the Web to all. As a company that participated in the development of SGML, then HTML, then XML and the related standards, we also believe that the policy should not discriminate against the many people, companies, and organizations from many countries who donated their intellectual property and their work over several years, without expecting licensing fees. Thus W3C should use every means in its power to ensure that all Recommendations are royalty-free. There are several paths to this goal and further discussion of these potential paths is needed. Until the various ramifications are thought through, it may be appropriate for W3C to stop work on any specification where essential claims have been made and the companies making those claims are not willing to agree to RF licensing."

"The Once and Future Web." October 03, 2001. By Michael Rose (Center for Tele-Information, Technical University of Denmark). "... There is a much larger issue lurking beneath the surface of this discussion. It is not simply about at what stage a W3C member should disclose a potential patent conflict. It is about whether the Web will remain a democratic medium or whether it will be subsumed and controlled by the telecom and broadcast industries. It is a fight over control of the medium by controlling the means of production. Patents are a weapon for control, but don't mistake them for the enemy..."

"Concerns raised by new patent policy." October 09, 2001. By Philippe Aigrain (Head of Sector 'Software Technologies', European Commission DG INFSO/E2 Office N105 3/54). "The key factor in the success of the Web is not its (sometimes late) endorsement by large industry players. It is its endorsement by the public. The trust of the public in the Web, the ability of many small and independent entities (not always aiming at profit) to develop, experiment, validate and bring to maturity new information exchange mechanisms has brought more business to these players that they ever dreamt they could get. Now that this is taken for granted, their intellectual property departments would like to capitalise on it and derive revenue from the Web information infrastructure itself..."

[ISO WGs]. Posting of 2002-05-13 by Rick Jelliffe to XML-DEV on the role of small or independent players in standards work. "ISO should not act as a marketing arm for purported owners of IP. In fact, I think I will recommend to our national body that all technologies with undonated IPR should be voted against, as a matter of policy regardless of their technical merits." [The referent may be (?) ISO/IEC JTC 1/SC 29, since the preceding paragraphs discuss MPEG; SC 29 is widely reputed to live deep in the pockets of some large companies. Note the larger context for the sentiment, which is supportive of ISO: "... On the contrary, I have served on ISO WGs for several years, and currently am the editor of a part of ISO DSDL, (the part which is standardizing Schematron, a schema language that is completely unencumbered...) I like ISO, I especially like the discipline of one-vote per nation..."]

"Software Patents vs. Free Software." By Bruce Perens. [August 2001] "... Large companies like HP most often use patents defensively. Since they know that other companies will apply for patents and then sue for patent infringement, a company that wants to defend itself files its own patents to use against its competitors. This creates a détente between the company and its competitors - each could sue the other in a similar way, so neither one does. The competing companies generally enter a cross-licensing agreement, licensing all of each others patents. Each company thus nullifies the other company's power to sue over its patents. Large companies are generally cross-licensed with many other large companies, including their own competitors, and thus their power to sue each other over patent infringement is mostly nullified. So, since the big companies patents all are used to nullify each other, the patents really have zero value to the companies. Why, then, do they bother with patents at all? I think the primary reason is a typical feature of détente: if you stop behaving offensively before the other guys do, you lose. If one large company stopped filing new patents, the other companies would no longer have a reason to cross-license with that company, and then the other companies would start filing patent-infringement lawsuits. There are a few other reasons that large companies continue to file patents: some of them want to use them to fight a competitor who isn't cross-licensed, for example a Free Software developer who writes a competing program. Some of them use patents to give investors an impression that the company has value. However, the vast majority of software patents, some say as high as 95% of them, are actually invalid due to the existence of prior art. Prior art means that someone else has invented the same thing before, and has published or disclosed the invention in some way, thus invalidating all future patents on that invention. Because software patents are so often invalid, the investor is being deceived. When I've taken this up with companies who are looking for investment and list their patents as major assets, I usually get an answer like yes, we know that is a problem for software patents in general, but ours are enforcible. Yeah, right..." [cache]

["Joint Negotiation" ... From "Patents and Standard-Setting Processes," a statement of Scott K. Peterson (Hewlett-Packard Company) for FTC/DOJ Hearings on Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy. April 18, 2002: [what if a] consortium proposes to go beyond requesting disclosure of the holder's planned license terms and embarks on a concerted negotiation over mutually acceptable terms under which they will adopt the holder's specifications for the new standard. One could characterize that scenario as a form of 'joint buying' of an input into a new 'product' that the parties are jointly developing. The [US] agencies have blessed joint buying scenarios in many contexts, and this is one where agency approval would be appropriate as well. We are worlds away from case law condemning 'buyer cartels'; we are talking about collaborations for creating new standards that advance new technologies, and these collaborations fit well within case law applicable to 'joint ventures' of many kinds... In short, the sort of 'joint negotiation' or joint consideration of license terms during a standard-setting process that I have described in my example should be unassailable under the governing antitrust rule of reason. Indeed, as I have already suggested, it may often be the most efficient if not the only practical way of avoiding patent holdup or ambush problems and should be considered presumptively procompetitive on that ground. Limitations on the scope of or other safeguards attaching to this activity can be fashioned to obviate concern over any countervailing anticompetitive risk. The bottom line, in my view, is that it is desirable and in the public interest that standard-setting groups be not only permitted but encouraged to experiment with various mechanisms for consideration of specific license terms before decisions on the content of a standard are engraved in stone..."

"Intellectual Property Rights and Standards Setting Organizations: An Overview of Failed Evolution." Submitted to The Department Of Justice and The Federal Trade Commission. Session: "Intellectual Property Strategies in Standards Activities." By Carl Cargill (Director Of Standards, Sun Microsystems). 27-March-2002. 8 pages. "This paper looks at the evolution of SSOs and how this evolution contributed to the current set of problems in IPR regimes among the various types of SSOs [Standards Setting Organizations]. It offers a structural, rather than legal, response to this problem... Criteria are needed to define an ideal SSO IPR policy framework requiring an SSO to address the key issues arising today such as required licensing terms (e.g., RAND and/or RF), IPR disclosure requirements and correlating timelines, and governing law... Today's variegated IPR regime is the legacy of a flawed evolutionary process that represents a real and true barrier to standardization. Ambiguity or conflict amongst SSO IPR policies will paralyze the standardization process. Unless some method can be found to create a required framework for SSO IPR policies, there can and will be little progress made in creating a fully functional environment. The lack of a standard - whether it is for IPR, or technology - serves only those who would keep information, and the ability to manage one's own information, under proprietary control." See the related document "The Role of Consortia Standards in Federal Government Procurements in the Information Technology Sector: Towards a Re-Definition of a Voluntary Consensus Standards Organization." Submitted by Carl F. Cargill to the House of Representatives Sub-Committee on Technology, Environment, and Standards. June 19, 2001. [cache]

Len Bullard on Patents 2002-05. XML-DEV posting. "I believe patents are allowable in standards and specifications where the scope of licensing is not punitive. There are viable cases for this such as the MPEG patent pool, PDF, etc. where the licensing is reasonable and to an able customer. Where vendors license to other able vendors, research costs can be shared in an effective way. Licensing terms, not patents per se, are the issue. We have to fix the patent systems in our countries, but that is simply evolution. Licensing is a policy issue. A license on a core transaction type that levies a fee for each and every transaction (the most absurd case I can conceive) is clearly on the other extreme. It can't be collected fairly so will warp the system of payment and make criminals out of the unwitting. Today, it may be the case that the currently published policy is the only reasonable one if the W3C is indeed helpless in the face of the inefficient patent systems of the nation states and the predatory behaviors of its own members. This is a shoddy situation and one hopes that with effort, we can do a better job given the power of these precedents and their potential to weaken the W3C imprimatur. In a sense, this comes down to reasonable business rules. I would consider the following to be strategies worth considering [...]" A separate posting posting from Len Bullard to the W3C 'www-patentpolicy-comment' list on 2002-10-02 explains his analysis further: "...The W3C is on dangerous ground and has been for some time. The XPointer situation illustrates that and how it can be taken completely out of their hands using a submarine patent, even one that in the face of prior art, is left standing given the lack of will or resources to overturn it. Such patents may have favorable terms offered, but a patent can be reassigned, sold, etc. and the new owner not bound by these terms. I don't think they can continue to operate unless a RAND policy is adopted because the lucrativeness of patents and patent pools (see MPEG) is known and given the low profit margins in core technologies (not low-level as defined in the policy, but such things as browsers), will be pursued with relentless vigor..."

[June 15, 2006] "Sun Microsystems Publishes Non-Assertion Covenant for SAML Implementations." On June 15, 2006, Sun Microsystems issued a 'SAML Non-Assertion Covenant' in connection with OASIS Security Assertion Markup Language (SAML) specifications being created by the OASIS Security Services (SAML) TC. Sun's unilateral, voluntary waiver of its right to enforce possibly relevant patent claims alleviates the burden upon implementers to negotiate license terms, eliminates paperwork, and creates a favorable environment for the develoment of open source software. Similar declarations have been made by Fidelity Investments, RSA Security, and America Online, Inc. in relation to the SAML specification(s). See further information in the main entry.

[November 11, 2005]Open Invention Network Collects Patents to Promote Royalty-Free Linux. A joint announcement from IBM, Novell, Philips, Red Hat, and Sony describes the creation of a new Open Invention Network (OIN) dedicated to the promotion of technology innovation around Linux. Led by CEO Jerry Rosenthal, former Vice President of IBM's Intellectual Property and Licensing business, the partnership will build a collection of patents and "offer them royalty-free to promote Linux and spur innovation." The company is said to be the first of its kind: "Patents owned by Open Invention Network will be available on a royalty-free basis to any company, institution or individual that agrees not to assert its patents against the Linux operating system or certain Linux-related applications." Patent pools are more often created for offensive purposes: major patent holders in a narrow application domain privately agree to cross-license patents to each other, while creating an unopposable cartel that can fix royalty fees and demand payment from any other (non-cartel) companies. The Open Invention Network is something of the opposite: a patent pool created to promote patent non-enforcement, or non-aggressive patent use, to reduce patent litigation and create an opportunity for innovation in a patent-free (or mostly patent-free) global context. The Open Invention Network represents the latest in a series of similar patent contribution initiatives designed to limit the deleterious, stifling effect of patented technology in certain computing application areas. Previously, CA, IBM, Nokia, Novell, OSDL, RedHat, and Sun have announced programs of "patent disarmament" through contribution of patents to royalty-free use, creating the basis for a patent commons. According to several statements from Jerry Rosenthal and others, the goal of the OIN collaboration is not revenue collection, but freedom to innovate in a patent-free framework.

[October 04, 2005] Sun Patent Non-Assertion Covenant for OpenDocument Offers Model for Standards. On September 30, 2005 Sun Microsystems published a declaration of non-enforcement of its U.S. and foreign patents against any implementation of the Open Document Format for Office Applications (OpenDocument) v1.0 Specification or of any subsequent version of ODF. This non-assertion covenant is being praised as a creative mechanism for patent management in the OASIS open standards development context — a "model for patent protection that doesn't involve the glorification of software patents." Sun's public non-assertion declaration may be summarized unofficially as an irrevocable covenant not to enforce any of its enforceable U.S. or foreign patents against any implementation of the OASIS OpenDocument specification; however, this commitment is not necessarily applicable to any individual, corporation, or other entity that asserts, threatens or seeks to enforce any patents or patent rights against any OpenDocument Implementation. Clarification of terms governing the use of the OASIS OpenDocument Standard is especially important because the final version of the Enterprise Technical Reference Model Version 3.5 published by The Commonwealth of Massachusetts and made effective on September 21, 2005 features the OpenDocument spefification. As presented in the ETRM Version 3.5 Introduction and Information Domain final documents, the Commonwealth defines open formats as "specifications for data file formats that are based on an underlying open standard, developed by an open community, affirmed and maintained by a standards body and are fully documented and publicly available." Three (3) Open Format Technology Specifications are identified in ETRM Version 3.5: [1] OASIS Open Document Format For Office Applications (OpenDocument) v. 1.0; [2] Plain Text Format; [3] Hypertext Document Format v. 4.01. The Sun OpenDocument Patent Statement was published apparently in response to a question about whether users of the OpenDocument standard would need to ask Sun for a [formal, explicit, executable] license, and whether users would have to give Sun a reciprocal executed license as a precondition. Sun has updated its OASIS vintage-2002 IPR declaration with a clarification that no such license application or license paperwork are necessary. The non-assertion covenant is a public, blanket declaration asserting the freedom of anyone to implement the OpenDocument specification without needing to transact paperwork or otherwise to ask for Sun's permission.

[August 09, 2005] "OSDL Announces Patent Commons Project. Group Hopes to Encourage More Patent Holders to Contribute Intellectual Property to Open Source Community." By Dan Nystedt. From InfoWorld (August 09, 2005). "The Open Source Development Labs (OSDL), a global group dedicated to promoting Linux, on Tuesday announced a new initiative, called Patent Commons, to collect the software licenses and patents pledged to the open source community into a central repository to make them easier to access by developers, and encourage more patent holders to pledge their intellectual property to the cause. The move will increase the utility of the growing number of patent pledges and promises in the past year by providing a central location for open-source software developers, OSDL said. It will also reduce the threat of patent-related lawsuits, it said. The move will also encourage more companies and individuals to pledge their intellectual property (IP) to the open-source community by reducing the administrative headaches posed by granting individual licenses, which the OSDL said is a barrier to the formal licensing of patents. The OSDL hopes the measure will help encourage more companies to pledge their IP to the open source community, a group that includes IBM Corp., Nokia Corp., Novell Inc., Red Hat Inc., and Sun Microsystems Inc. Vendors like these that pledge their patents to the Patent Commons project are, in general, promising not to file lawsuits against developers or users. At the same time, patent holders will be assured that the right to enforce the patents is watched over by an organization dedicated to open-source software, OSDL said..."

[August 02, 2005] European Union Public Licence Version 01. European Community, Draft License. The EU's IDABC Programme has just released the 'EU public licence' (EUPL), a draft open source software license designed to provide legal certainty for software owners and users in the European context. "The aim of the EUPL is to encourage public administrations throughout Europe to publish the software applications they develop and that could be used by others." According to the statement of scope of the rights granted by the Licence: The Licensor hereby grants You a world-wide, royalty-free, non-exclusive, sub-licensable licence to do the following, for the duration of copyright vested in the Original Work: (1) use the Work in any circumstance and for all usage, (2) reproduce the Work, (3) modify the Original Work, and make Derivative Works based upon the Work, (4) communicate to the public, including the right to make available or display the Work or copies thereof to the public and perform publicly, as the case may be, the Work, (5) distribute the Work or copies thereof, (6) lend and rent the Work or copies thereof, (7) sub-license rights in the Work or copies thereof. In the countries where moral rights apply, the Licensor waives his right to exercise his moral right to the extent allowed by law in order to make effective the licence of the economic rights here above listed." See the IDABC eGovernment discussion forum and reference page. [cache]

[July 28, 2005] "Providing a Marketplace for Web Services." United States Patent Application #20050165656. Published: July 28, 2005. Filed: January 27, 2004. Inventors: Robert Frederick; (Seattle, WA); Ashish Agrawal (Seattle, WA); Jeffrey Barr (Sammamish, WA). Abstract: "A method, system, and computer-readable medium is described for facilitating interactions between computing systems, such as by providing an electronic Web service ('WS') marketplace via which third-party WS providers make their WSes available to third-party WS consumers who locate and purchase access to those WSes via the electronic marketplace. Some or all available WSes may have associated use prices and or non-price use conditions, and if so access to those WSes may be provided only if a consumer requesting access provides appropriate payment and otherwise satisfies the specified use conditions. In some situations, WS consumers may also purchase subscriptions to provide later access to registered WSes. This abstract is provided to comply with rules requiring it, and is submitted with the intention that it will not be used to interpret or limit the scope or meaning of the claims." See: "Amazon Files for Web Services Patent." [alt URL, or use the patent search form for application #20050165656.

[July 08, 2005] "Apache Faces Web Services Security Spec Roadblock. Open Source Organization to Meet with Microsoft, IBM." By Paul Krill. From InfoWorld (July 08, 2005). "Apache officials hope to iron out licensing issues with Microsoft and IBM pertaining to the WS-Security specification, so that Apache can add the technology to its open source Axis SOAP stack. Axis is envisioned as a Web services engine for deploying SOAs, according to Apache. WS-Security is needed to communicate with .Net systems, said Davanum Srinivas, vice president of services at the Apache Software Foundation. Although WS-Security is available for implementation royalty-free, it still must be licensed from Microsoft and IBM. Apache has raised concerns about this, mostly pertaining to a non-transfer clause that appears incompatible with open source licenses that allow for uninhibited transfer of technologies, Apache officials said. 'The big picture here is that we want users of open source to also be able to be distributors of open source, and that should happen without a requirement to go back to some other vendor for additional terms, to get rights from some other vendor,' said Cliff Schmidt, vice president of legal affairs at the Apache Software Foundation. There have been some discussions with IBM and Microsoft about the issue: 'What we know is that there needs to be further clarification from IBM and Microsoft regarding their licenses in order to make this compatible with open source licenses,' Schmidt. said. Being a contributor to Apache, IBM is eager to cooperate with the foundation and is optimistic about reaching a resolution, according to Karla Norsworthy, vice president of software standards at IBM... The issue arose when VeriSign wanted to provide via open source its TSIK (Trust Service Integration Kit) toolkit, which implements WS-Security, to Apache, the Apache officials said. Microsoft has not been an advocate of open source technology to the same degree as IBM. Citing staff commitments to the TechEd Europe conference, Microsoft representatives said a company official would not be able to comment on the Apache issue this week. The company released the following statement: 'WS-Security is an open standard at the OASIS standards organization. Microsoft has made a royalty-free license commitment for WS-Security that is consistent with the OASIS IPR policy. In terms of Apache plans, it is best to ask them about any plans they may have'..." See related references and commentary.

[July 6, 2005] "American-Style Patents Won't Cross the Pond to EU." By Steven J. Vaughan-Nichols. From eWEEK (July 6, 2005). "The European Parliament overwhelmingly rejected the European Union's controversial IT patenting proposal on Wednesday, but what will that decision mean for business and open-source? As originally drafted, the law would have put in a system, which would have brought the EU into harmony with patent practices in the United States and Japan. Critics, however, said that it would legitimize software and business-practice patents. Currently, patents on pure software and business processes are not enforceable in the EU. The Foundation for a Free Information Infrastructure, the main coordinator of European opposition to software patents, said the result was a victory for democracy over the 'free ice-cream, boatloads of hired lobbyists and outsourcing threats' wielded by large IT businesses. The open-source community is applauding the law's defeat. 'In theory, a healthy software-patent system might reward innovators and promote the worthy objective of the advancement of knowledge and the useful arts,' said Eric Raymond, co-founder of the OSI (Open Source Initiative). 'In practice, American-style software-patent systems have serious flaws, including weak patentability filters and failure to systematically check submissions against important bodies of prior art such as Internet open-source repositories. Their effect is to actually suppress innovation. Still, 'In the near term, it will likely not make much difference at all, because the rules in Europe will remain what they are, which do in fact allow some form of software patenting, and most IT businesses and FOSS (free and open-source software) projects will still have activity in the United States, where software patents are alive and well,' said Daniel B. Ravicher, executive director of the Public Patent Foundation..." See "Europe Rejects Patent Proposal."

[June 17, 2005] "MS Office XML Formats Not OK with GNU." By Peter Galli. From eWEEK (June 17, 2005). "The royalty-free license under which Microsoft plans to make its upcoming new Office Open XML Formats widely available is incompatible with the GNU General Public License and will thus prevent many free and open-source software projects from using the formats, community officials say. In addition, a leading patent official is calling into question the validity and enforceability of the Microsoft Corp. license and suggesting that free and open-source software developers need not comply with its conditions. Richard Stallman, the president of the Free Software Foundation and the author of the GNU GPL, has dismissed any benefit to the free-software community from [Microsoft's] move. The conditions imposed by the current license governing the use of the formats are "designed to prohibit all free software. It covers only code that implements, precisely, the Microsoft formats, which means that a program under this license does not permit modification," Stallman told eWEEK in an interview. 'The freedom to modify the software for private use, and the freedom to publish modified versions, are two of the essential components in the definition of free software. If these freedoms are lacking, the program is not free software; As the GPL is a "copyleft" license (a license that makes programs free and requires that all the modifications and extensions of the program also be free), applying Microsoft's restrictive license to a GPL-covered program would violate the GPL.' Jean Paoli, the senior director of XML architecture for Microsoft, told eWEEK in an interview that 'Microsoft is committed to open XML file formats and this move shows that we have moved away from binary content that no one can access.' However, what Microsoft is not trumpeting is a provision that requires anyone who uses the XML file format to attribute this in their code. This could preclude any technology that uses these file formats from being used in Linux and other open-source technologies licensed under the GPL, Paoli admitted..."

[June 08, 2005] "[Fedora Foundation and the Software Patent Commons.] Red Hat Spins Off Fedora Project into Fedora Foundation." By Paula Rooney. From CRN (June 08, 2005). "Red Hat is trying to ramp up its profile in the open source community by spinning off its Fedora open source project into an independent foundation and ramping up its patent reform efforts in the U.S. and in Europe. As part of the transition, the Fedora open source project will transfer development work and copyright ownership of contributed code to the foundation but Red Hat will continue to provide substantial financial and engineering support. The company makes its Red Hat Linux distribution available as part of Fedora and said this week that its newly introduced Directory Server and forthcoming Certificate management System will be available on Fedora under the General Public License (GPL). But the Fedora Foundation is just one of three intellectual property (IP) initiatives being announced by Red Hat this week at its first summit, designed to advance its standing in the open source community. At the Red Hat Summit, Mark Webbink, Deputy General Counsel at Red Hat, is expected to announce the creation of the Fedora Foundation and the Software Patent Commons. Such efforts signify Red Hat's desire to builder a broader community of developers for its Linux distribution. Fedora is a popular open source project in the Red Hat community but it does have the same pedigree as high profile organizations such as the Linux kernel project, Apache, MySQL or JBoss. Red Hat released its first Linux distribution to the Fedora project ' Fedora Core 1 ' in November of 2003. The company is preparing to release Fedora Code 4 in the near future, executives said at the conference in New Orleans. The proposed patents common, which mimics the Creative Commons licensing scheme for creative works including art and music, is designed to enable developers to exchange ideas with fewer concerns about patent infringement. and Red Hat's efforts to lobby for patent reform in the U.S. and Europe..."

[June 03, 2005] "That Microsoft XML Patent." By Tim Bray. Ongoing Blog. June 03, 2005. Topic: United States Patent #6,898,604. "The coverage from ZDNet ['Microsoft Slammed Over XML Patent'] says the patent is for the conversion of objects into XML files; but if you read the patent itself, the important 'Claim 1' doesn't even mention XML, it's just about serializing objects based on using an annotated source file and a schema. I was trying to find a way to write about this without becoming shrill and using bad language, but failing. Fortunately, I ran across a good opinion, shrill but not obscene, penned by Greg Aharonian who's a real actual patent lawyer and thus qualified. Herewith a little bit of my own shrillness, followed by Greg's professional evisceration of this extreme case of patent bogosity... [Greg Aharonian On the Microsoft Patent: Last Tuesday, Microsoft was awarded the following patent for converting objects to XML and back. Within days, if not hours, there were the usual shrieks, howls, hairpulling and moaning wails from the anti-software patent world. What's the fuss? This patent isn't valid, and it won't be asserted. Here is my three minute invalidity search report for the patent. This patent is not valid, and it won't be asserted — ever. Stop shrieking. Try Shreking..." See "Microsoft XML Technologies and Patents Drawing Fire from Multiple Quarters," by David Berlind, in ZDNet.

[May 26, 2005] "Microsoft Slammed Over XML Patent." By Ingrid Marson. From ZDNet News UK (May 26, 2005). "A software patent granted to Microsoft in the US has been labelled an 'abomination'. Software developers are angry that Microsoft has been granted a patent for the conversion of objects into XML files. The patent, which was granted by the US patent office on Tuesday, is for XML serialisation and deserialisation — the conversion of a programming object into an XML file and vice versa. XML, an open standard developed by the W3C, is commonly used for representing data structures in applications that exchange data. As applications will often need to convert between programming objects and XML files, this patent could cover virtually any application that uses XML to transfer data. Wookey, a developer on the free Linux distribution Debian, said the patent should not have been granted and could be used by Microsoft to discourage competition. 'It's an abomination to anyone who does programming that the concept of every possible way of converting between a programming object and an XML file (and vice versa) can be owned by one company,' said Wookey to ZDNet UK. 'Should someone else want to save a programming object in the form of an XML file, Microsoft can now charge them for the privilege or simply refuse them permission to do it at all in the US'..." See United States Patent #6,898,604.

[January 13, 2005] IBM Proposes a Patent Commons for Royalty-Free Open Source Software Development. IBM has announced a new innovation initiative to support an industry-wide "patent commons" through which patents offered without payment of fees or royalties are used "to establish a platform for further innovations in areas of broad interest to information technology developers and users." The pledge extends to Open Source Software (OSS). IBM has seeded the initiative by publishing a "Statement of Non-Assertion of Named Patents Against OSS" that identifies 500 listed U.S. patents and/or the counterparts of these patents issued in other countries. The pledge to offer these patents free of fees or royalties "is applicable to any individual, community, or company working on or using software that meets the Open Source Initiative (OSI) definition of open source software now or in the future." Like other companies contributing to standards development in the IT arena, IBM has already been making selected patents available on a royalty-free basis for use in open standards covering software protocols, file formats, and interfaces. At the August 2004 LinuxWorld Conference and Expo, IBM's Nick Donofrio announced a promise that IBM would not "use its formidable collection of technology patents against Linux, and challenged other companies to do the same, working to dispel one cloud that hangs over the open-source programming movement." With reference to some twenty-seven essential patents affecting Linux, CNet News.com reported Donofrio as saying "IBM has no intention of asserting its patent portfolio against the Linux kernel, unless of course we are forced to defend ourselves." The new pledge for open access to key innovations covered by 500 IBM software patents is characterized by IBM as a "major shift in the way IBM manages and deploys its intellectual property (IP) portfolio." The pledge is said to cover "thousands of open source projects and programs," and is "not a one-time event." According to Dr. John E. Kelly, IBM's Senior Vice President of Technology and Intellectual Property, "IBM will continue to demonstrate leadership in patent output, through measures such as today's pledge, will increasingly use patents to encourage and protect global innovation and interoperability through open standards, and [will] urge others to do so as well."

[December 6, 2004] "Web Services Patents Fetch $15.5 Million." By Alorie Gilbert. In CNET News.com (December 6, 2004). "A mysterious bidder paid $15.5 million Monday in a bankruptcy court auction of dozens of Internet-related patents — and then rushed out of the courtroom. On the United States Bankruptcy Court auction block were 39 patents owned by Commerce One, a bankrupt software company in Santa Clara, Calif., that's in the process of shutting down and liquidating its assets... The winning bidder was a company called JGR Acquisitions. An attorney representing JGR was mum about his client, dodging reporters' questions as he rushed out of the court room at the close of the auction. Attorneys for Commerce One and the bankers who solicited bids for the auction also declined to discuss JGR. A document the company filed with the court was scarce on information as well, so JGR's business, its owners, location and its plans for the newly acquired patents all remain mysteries. JGR beat out seven other bidders, including two companies connected to Nathan Myhrvold, a former Microsoft executive who now runs Intellectual Ventures, a company that collects patents. One of those companies was ThinkFire Services USA, an intellectual property consulting firm in Clinton, N.J. The firm, where Myhrvold serves as chairman and co-founder, bid as high as $14.3 million. Brissac, which also employs Myrhvold, bid as high as $14.9 million. In another unusual twist, the identities of two bidders who placed bids through their attorneys remained undisclosed. Judge Dennis Montali, who is hearing the bankruptcy case, said he'd never encountered that condition before and allowed it despite an objection from one of the other bidders..." See the news story "CommerceNet Proposes Collecting Contributions to Purchase Key Web Services Patents."

[November 2004] "The Problem of Software Patents in Standards." By Bruce Perens (Senior Research Scientist, Open Source Cyber Security Policy Research Institute, George Washington University). Paper delivered at the FFII Conference "Regulating Knowledge: Costs, Risks, and Models of Innovation," Brussels, November 9-10, 2004. [A two-day conference, sponsored by MERIT, CEA-PME, the Open Society Institute, the Greens/EFA in the EP, and FFII; to survey the state of the policy debate over software patents and its relation to broader issues of access, innovation, and control of knowledge in the knowledge-based economy.] "Patents, originally created to stimulate innovation, may now be having the opposite effect, at least in the software industry. Plagued by an exponential growth in software patents, many of which are not valid, software vendors and developers must navigate a potential minefield to avoid patent infringement and future lawsuits. Coupled with strategies to exploit this confusion over patents, especially in standards setting organizations, it appears that software advancement will become stifled unless legal action is taken to resolve the situation. This article examines the current situation facing software developers and users, the methods employed by standards setting organizations to address these problems, and recommends strategies for resolving the problem caused by software patents... The problems presented by software patents are numerous and must be addressed on many levels. Standards setting organizations can partially resolve this problem by following the W3C's model in which the intellectual property policy is clearly stated and members are required to adhere to that policy. New legislation providing protection from patent-farming and submarine patents is necessary. In addition, governments should recognize the importance of interoperability to any free market for computer software, and should legislate to allow the royalty-free use of patented principles for interoperability purposes. Developers can perform due diligence, but no strategy is available to a software developer that will be fully protective against the risk of patent prosecution. Thus, developers should investigate whether adequate insurance coverage is available, and should continue to agitate for protective legislation..."

[November 16, 2004] "Auction of Internet Commerce Patents Draws Concern." By John Markoff. In The New York Times (November 16, 2004). "More than three dozen patents said to cover key facets of Internet transactions will soon be auctioned off by Commerce One, a bankrupt software company. But even before the sale, some technology executives and lawyers are worried that potential buyers might wield the patents in infringement lawsuits against companies that are engaged in online commerce, like I.B.M. and Microsoft. The 39 patents cover basic activities like using standardized electronic documents to automate the sale of goods and services over the Internet. Some intellectual property experts said that these patents, which have broad reach, could be used to challenge Web services like the .Net electronic business system from Microsoft or Websphere software from I.B.M... The Commerce One patents cover a technology known as 'Web services,' software at the heart of computerized systems designed to automate the buying and selling of goods and services online. If the patents are upheld by the courts and are used 'offensively' in an effort to obtain licenses from Internet commerce companies, they could limit innovation, said a representative of the World Wide Web Consortium, an Internet standards body. 'The consequences are potentially substantial,' said Daniel J. Weitzner, the head of the technology and society group at the Web consortium. 'We've had a number of situations where technology development has been blocked because there has been confusion about whether particular patents apply.' Mr. Glushko, for one, said that Commerce One had originally intended to create a public standard with its work, not constrain the use of online commerce processes. 'We filed these patents to describe a standard method for using documents to connect services into business networks,' said Mr. Glushko, who is now an adjunct professor at the University of California at Berkeley in the School of Information Management and Systems. 'At Commerce One, our business model depended on an open infrastructure for doing that. It is completely antithetical to our intent to use the patents to prevent it.' Commerce One, founded in 1994 and based in Santa Clara, Calif., developed software applications for electronic commerce. In 1999, it acquired a small start-up firm, Veo Systems, which had developed electronic commerce technology based on set of protocols known as Extensible Markup Language, or XML. The idea was that a publicly available technology like XML would help electronic markets grow rapidly. Mr. Glushko said that as a co-founder of Veo he had contributed the ideas in several of the key patents to industry standards groups, a move that may have placed those ideas in the public domain. Mr. Glushko contends that those contributions make the patents harder to enforce. However, a representative of Commerce One in the bankruptcy proceeding said that his firm had explored that issue and that the patents were enforceable..." URI (possibly requiring registration): http://www.nytimes.com/2004/11/16/technology/16patent.html; see the complete text (unofficial, display only).

[November 01, 2004] "Standards, Patents and the Dynamics of Innovation on the World Wide Web." By Daniel J. Weitzner (Technology & Society Domain Leader, World Wide Web Consortium; Principal Research Scientist, MIT Computer Science and Artificial Intelligence Laboratory). Draft. 1-November-2004. "While the Web does not yet reach every single person in the world, it has enabled an unprecedented exchange of knowledge, information, goods and services around the world. Of critical importance to the rise of electronic commerce as a new marketplace, Web technology allows a wide variety of new systems and technologies to be built on top of the basic architecture of the Web, thus enabling continual innovation in the design of Web-based applications and services. Two key attributes of Web standards are responsible for the ubiquity and flexibility of the Web: (1) simple, extensible design, and (2) open, unencumbered standards... Nearly four years under development, the W3C Patent Policy has still only been used for about one year at the time of this writing. There is much to learn about how the royalty-free licensing model will function on the web standards environment. What is clear is that the vast majority of the technical community that innovates, develops, maintains and uses the Web believes that it is essential to make this policy work. The community has learned, through ten years of actually buidling the Web and debate over the policy, that continued innovation and advances in Web technology depend on the success of the policy..."

[September 27, 2004] "Does the Patent System Need an Overhaul?" By Sabra Chartrand. In New York Times (September 27, 2004). "Josh Lerner and Adam B. Jaffe have written a book with a title Innovation and Its Discontents: How Our Broken Patent System is Endangering Innovation and Progress, and What To Do About It, to be published in November 2004 by Princeton University Press. The two professors conclude that a couple of unrelated and seemingly innocuous administrative reforms of the patent system have caused a shift away from encouraging innovation in favor of exploiting patents largely for lawsuits. The ability to litigate and expect to get substantial award from litigation increased,' Mr. Lerner said. 'So as a result we've got somewhat of a vicious cycle. Once you get one firm in an industry beginning a strategy of aggressive patent enforcement, it creates an almost inevitable response — an almost arms-race dynamic — where everyone else in the industry says, "We better be doing the same thing."' He suggested that these changes for the worse occurred because 'there's a relatively small group of people in the D.C. patent bar, and they have a very powerful influence on how patent policy gets decided. There is a powerful incentive for them to keep a patent system that is complicated, and one that involves protracted, costly litigation'..."

[September 24, 2004] "Catastrophic Loss for Unencumbered Standards." By David Berlind. From ZDNet News (September 24, 2004). IETF's MARID WG, "the most promising of current attempts to create an e-mail authentication standard for combating spam, is dead. MARID's work had been hampered by technical disagreements among, and the competing interests of, the most influential members of the Internet's e-mail ecosystem. There were also concerns regarding Microsoft's application for a patent that covered the techniques being considered by the group. Any exclusive intellectual property rights (IPR) to an Internet protocol (especially one for a killer app like e-mail) can afford a patent holder significant control over a part of the Internet. It's no surprise, then, that IPR has a history of mixing with unencumbered standards (technologies with no licensing restrictions or royalty payments connected with them) the way oil mixes with water. One hope on the sender authentication front is continued momentum for Meng Weng Wong's Sender Policy Framework (SPF). Prior to MARID's deliberations, Wong offered his SPF specification to the world on an open source basis. Meanwhile, under the directive of Bill Gates, Microsoft was rapidly evolving its own sender authentication specification known as Caller ID. The two specifications, with resolvable technological differences, merged to produce Sender ID. And it is the kernel of SenderID — the focus of MARID's work — that now hangs in a limbo brought about by concerns regarding Microsoft's licensing terms and a patent application...Though hope remains that the pieces can be reassembled in a way that puts a sender authentication standard (perhaps non-IETF) back on track, MARID's dissolution is an example how corporate greed, proprietary interests, and ego can drive the cost of computing through the roof. Without unencumbered standards, we'll only be left with costly proprietary solutions — and a lot of difficulty in switching should we ever become dissatisfied with what we choose, or what's forced upon us..." See details in the news story "Apache Software Foundation Rejects Microsoft Patent License Agreement for Sender ID."

[September 03, 2004]Apache Software Foundation Rejects Microsoft Patent License Agreement for Sender ID. An open letter from Apache Software Foundation (ASF) to the IETF MTA Authorization Records in DNS (MARID) Working Group announces the decision of ASF projects not to implement or deploy the IETF Sender ID specification under terms required by Microsoft's Patent License Agreement. The letter from Apache also expresses concern that "no company should be permitted IP rights over core Internet infrastructure" and urges the IETF to "revamp its IPR policies to ensure that the core Internet infrastructure remain unencumbered." The IETF Sender ID specification as governed by the Microsoft Patent License Agreement includes an Internet Draft Sender ID: Authenticating E-Mail and companion I-D Purported Responsible Address in E-Mail Messages. The Sender ID specification defines mechanisms by which SMTP mail servers can determine "what email address is allegedly responsible for most proximately introducing a message into the Internet mail system, and whether that introduction is authorized by the owner of the domain contained in that email address." The PRA document defines an algorithm applicable to a given an e-mail message by which one "can extract the identity of the party that appears to have most proximately caused that message to be delivered." Microsoft has hoped for broad implementation of the Sender ID specification, said in its promotional web site to "address the widespread problem of domain spoofing. Domain spoofing refers specifically to the use of someone else's domain name when sending a message, and is part of the larger spoofing problem, the practice of forging the sender's address on e-mail messages. Eliminating domain spoofing will help legitimate senders protect their domain names and reputations, and help recipients more effectively identify and filter junk e-mail." However, legal review of the Microsoft Patent License Agreement by Larry Rosen (General Counsel, the Open Source Initiative) and others has determined that the license terms are "generally incompatible with open source, contrary to the practice of open Internet standards, and specifically incompatible with the Apache License 2.0."

[June 04, 2004] "Legally Speaking: Why Reform the U.S. Patent System?" By Pamela Samuelson (Chancellor's Professor of Information Management and of Law, University of California, Berkeley). In Communications of the Association for Computing Machinery (CACM) 47/6 (June 2004), pages 19-24. [URL is for an alternate online version]. "Computing professionals have been complaining for years about 'bad' software and Internet-related patents. Now there's something they can do about it: Support reforms of the U.S. patent system recommended in three recent high profile reports — one issued by the Federal Trade Commission, one by the National Academy of Sciences, and one by the U.S. Patent and Trademark Office. [We here] highlight three key reforms that deserve support. First, the nonobviousness standard (by which the U.S. patent system judges whether the patent applicant is an 'inventor') should be substantially reinvigorated. Second, there should be a more meaningful process for reviewing 'bad' patents so that they can be challenged in a more cost-effective manner than by full-scale litigation. Third, the presumption in favor of the validity of an issued patent should changed somewhat. At present, a challenger must produce 'clear and convincing' evidence of invalidity in order to overcome the presumption of validity that attaches when a U.S. patent is issued. The FTC recommends that a 'preponderance' of evidence of invalidity should suffice. Any one of these reforms would be an improvement, but the three together would significantly improve patent quality and hence, public confidence in the patent system... All three reports recommend that a new and more meaningful post-grant review (PGR) system be adopted. Reform includes broadening the issues that can be addressed in a PGR, allowing substantially greater participation by challengers in such reviews, and establishing an administrative law judiciary to conduct them. Each report recognizes the potential for abuses of the PGR process and recommends some measures to mitigate abuses. The current re-examination system only addresses the novelty of the claimed invention in light of pre-invention printed publications or patents. All three reports recommend expanding the issues upon which administrative review of patent validity to include such issues as nonobviousness, utility, adequacy of written description and enablement, along with other novelty-related issues (e.g., selling products embodying the invention more than a year before one applies for a patent)..." See also A Patent System for the 21st Century, edited by Stephen A. Merrill, Richard C. Levin, and Mark B. Myers, Committee on Intellectual Property Rights in the Knowledge-Based Economy, National Research Council. [cache]

[June 04, 2004] "Microsoft's New Plan to License Patents Has Linux Fans Worried." By Don Clark. In The Wall Street Journal (June 04, 2004), page B1. "Microsoft Corp., rarely the aggressor in legal affairs, has adopted a new approach to the use of its patents. Some fans of Linux and other open-source software are starting to worry that they could end up as targets. Microsoft now holds about 4,500 patents, covering its inventions in fields such as how computers store files and how text is displayed on a screen. In December [2003], Microsoft announced a new policy to begin licensing its patents, citing requests from customers, regulators and others, though it is unclear how many of the patents cover techniques already in use by other companies. The Redmond, Wash., software giant says it has more than 100 patent-licensing discussions under way. It's offering royalty-bearing licenses both to partners and competitors — even to sellers of open-source products that have emerged as the company's biggest threat. 'We have said that we are prepared to license our patent rights to all comers,' says Brad Smith, Microsoft's general counsel. 'That, by definition, includes open-source products.' But some proponents of open-source software see an implicit threat in such moves. They believe Microsoft may press for royalties from the distributors or even users of open-source programs including Linux, and they fear that Microsoft could resort to patent-infringement suits if they don't agree to licensing deals. Such a move could disrupt the open-source world, where many products are free or sold at low prices..." Excerpt posted to the W3C 'public-web-plugins' list June 04, 2004.

[April 16, 2004] Cisco's Comments. Presented by Robert Barr (Vice President for Intellectual Property and Worldwide Patent Counsel, Cisco Systems, San Jose, California). On pages 7-8, "Federal Trade Commission Patent Reform Workshop," Bancroft Hotel, Berkeley, California. April 16, 2004. 82 pages. Industry/Institutional Issues Panel. Co-moderated by Carl Shapiro (Haas School of Business, UC Berkeley) and FTC Commissioner Mozelle Thompson. "We [Cisco Systems] have an interest in avoiding infringement [...] But with patents, that is pretty difficult. We used to call it a minefield out there. Thanks to Carl [Shapiro, 'Navigating the Patent Thicket: Cross Licenses, Patent Pools, and Standard-Setting'], we now call it a thicket, which I think is a better image because it is not just a bunch of mines that we have to avoid, it is an overlapping morass of patents that is virtually impossible to avoid. In corporate-speak, that is a risk management problem of the highest order. It is virtually impossible to avoid all those patents because of the sheer number of them, but in addition to that, the unpublished patents, the published patents that you do not know what they are going to turn out to be... Why have we gotten to this situation? Well, for one thing, to many people, patents are a business in and of themselves. They are a revenue-generating operation that, you know, has high margin and relieves them of the terrible responsibility of bringing innovative products to market, they just tax others. So patents are a business. But, secondly, the reason we are in this situation is because those of us who are involved in the thicket contribute to it. We stockpile patents. We increase: every time we find out that everybody else is increasing patents, we increase. So you have a vicious cycle of stockpiling of patents, mutually shared destruction. What is wrong with that? It is a drain on resources, money, engineering time that could better be used for innovation..."

[April 17, 2004] "Reform the Patent System: [Report on] Day 2." Posted by Brian W. Carver (UC Berkeley School of Law, Boalt Hall). "The second and final day of 'Ideas Into Action: Implementing Reform of the Patent System' contained morning panels on Non-obviousness, Post-Grant Review (a.k.a. Opposition), and Litigation, while the afternoon was spent primarily on an Industry/Institutional Issues panel... Patent applications are scrutinized under, among other things, an 'obviousness' test. To represent an innovation worthy of receiving a patent, the innovation should be non-obvious. Of course, one of the biggest complaints about patents today is that too many of them seem absurdly obvious. The non-obviousness panel tackled this obvious problem... Todd Dickinson is a former director of the USPTO, though he has more recently been partner in a law firm and is about to take up a position with General Electric. We had heard hints that the USPTO sometimes has sharp elbows and looks askance at outsiders who would deign to tell it how to operate, and Dickinson seemed determined to confirm these rumors by showing he hadn't lost that USPTO contrariness. He said the FTC report (the one condensed from 5,000 pages of transcripts and pretty much the focus of this whole conference) was "based on anecdotal evidence, not empirical studies." He doesn't like the FTC's recommendation on lowering the burden of proof in patent litigation because it would universally devalue intellectual property; he doesn't like changes to the obviousness standard, especially not if they are driven by complaints about business-method patents or genomics patents which make up just 3-4% of patents granted..." See the blog for Day 1 from Elizabeth Miles, and the main conference entry.

[April 17, 2004] "No Obvious Solutions for IT Patent Reform." By Susan Kuchinskas. From Internetnews.com (April 16, 2004). "Executives of a group of top-tier technology companies plan to roll up their sleeves to help solve problems at the U.S. Patent Office. FTC Commissioner Mozelle Thompson closed a high-level conference on reforming the patent process Friday with the announcement of a new technology industry working group that will cooperate on making the patent system more responsive to technical innovation... The conference, co-sponsored by the Federal Trade Commission and the National Academy of Science (NAS), let academics, attorneys and business leaders comment on two reports on how to reform the system, one by the FTC released in 2003 and the NAS', to be released Monday. The U.S. patent process is deeply broken, according to the IT companies. As the number of patent applications has exploded, the quality has gone down. The result is boom times for lawyers and a lifetime of litigation for corporate counsel... Despite the wealth of solid ideas for improving the system, patent reform is not imminent. The U.S. patent system itself is ancient by Internet standards, and its pace is glacial. The FTC's report was published in October 2003; six months later, NAS has published its own call for reform. FTC Commissioner Thompson, said the next step is a political process to implement the recommendations, and that members of Congress are interested in hearing from some of the people who gave the FTC input for its report..." See the main conference entry.

[April 05, 2004] "Dodgy Patents Rile Tech Industry." By Amit Asaravala. In Wired News (April 05, 2004). "It's a good time to be a patent lawyer — especially if you work in the software-development industry. Over the past few months, the number of questionable patents distributed by the U.S. Patent and Trademark Office has reached a crescendo, and members of the software industry aren't about to let them go unchallenged Harold Wegner, a partner with the law firm Foley and Lardner and who once served as a patent examiner, blames the way examiners are pressured to dispose, or come to a decision on, as many patent applications as possible; if the goal is to dispose of as many applications as possible, then that forces you to accept cases. You wouldn't deny patents because you can't force someone to drop their (application) unless their patent is actually invalid.' In other words, examiners are biased toward accepting as many applications as possible in order to meet their quota... Many people, including USPTO spokeswoman Quinn, believe that this is why the office has only been asked to re-examine 6,932 patents out of the millions it has issued since 1981. Of the 91 percent of those cases that the office accepted for review, it has rejected only 479 patents outright and partially modified 3,061 Wegner has proposed that the United States adopt what he calls an administrative patent-revocation system, similar to the ones in Europe and Japan. The system would make it easier for third parties to request a patent review and would loosen the restrictions on their involvement. But so far, Wegner has not been able to convince lawmakers to pass such a bill... 'It's difficult to make changes in the way we operate,' Quinn said. 'The last major changes to the (patent) law were in 1952. After that, there were changes in 1999.' Those changes included the decision to make all patent applications available for public review after 18 months -- a move that advocates for patent reform have hailed as a step in the right direction. Still, there is no legislation before Congress today that would overhaul the patent-review process. That means that any improvements to the system must come from within the USPTO. So far, those improvements include a proposal to hire 2,900 more examiners — on top of the existing 3,600 — over the next five years, and an initiative to put more of the application process online..."

[March 16, 2004] "The Eolas-Microsoft Case — Patent Ending?" By Paul Festa. In CNET News.com (March 16, 2004). "The next round in Microsoft's Web browser patent fight will unfold in an obscure bureaucratic proceeding that offers the company and its allies few, if any, chances to argue their side. The University of California and Eolas could yet convince the U.S. Patent Office to uphold a key browser plug-in patent as the office's examiner moves on to the crucial next rebuttal stage... Wherever Microsoft's battle with Eolas ultimately winds up, it has for now thrown a spotlight on a little-known review procedure that from time to time has led the USPTO to overturn or revise patents. Known as director-ordered re-examinations, such reviews have been conducted just 159 times in the agency's history, resulting in at least partial changes in patents about 87 percent of the time. Although that bodes well for Microsoft, a detailed look at the re-examination process reveals advantages and pitfalls for both sides..."

[February 13, 2004] "MS' XML Patent Machine Patent in Doubt." By Rick Jelliffe. From O'Reilly Developer Weblogs (February 13, 2004). "The technology behind Microsoft's patents and applications related to word processor documents in a single XML file and multiple scripts in a single XML file is fascinating. Their wonderful Extensible Markup Language Patent Machine can generate a customized patent application for anything that can be collected into a single XML file, and 'vocabulary miners' are systematically working through every known class of data: spreadsheets, config files, media, graphics, financial data, patches, virues etc., submitting the auto-generated patent applications to the scrupulous attention of the Royal Tongan Patent Office. On and on, the machine diligently chugs through the whole dictionary. Fortunately, patent offices have their own patented rubber-stamping machines to cope. 'A personal computer on every desktop and an XML patent on every noun' is the company's new slogan, according to information recovered from a leaked company word processing file on a different topic. 'Innovative research has never been easier!', claimed a spokesman from the Machine Translation project..."

[February 12, 2004] "Microsoft Acquires United States Patent 6,687,897: XML Based Script Automation." 'Inventor': Olivier Guinart (Redmond, WA). Assignee: Microsoft Corporation. Application number: 727598. Filed: December 1, 2000. Granted: February 3, 2004. Abstract for patent #6,687,897. "Systems, methods and data structures for encompassing scripts written in one or more scripting languages in a single file. The scripts of a computer system are organized into a single file using Extensible Language Markup (XML). Each script is delimited by a file element and the script's instructions are delimited by a code element within each file element. Other information, such as a name of the script and a functional description of the script may also be included in the file using other XML elements to delimit that information. The language in which a particular script is written is also included within the XML format. When a particular script is executed, the file is parsed to create a list of the script names or of the functional descriptions of the scripts. One or more scripts are selected and the code for those scripts is extracted from the file and executed by the appropriate scripting process. The scripting process that executes a particular script is identified from the scripting extension attribute that is included in the XML format of the file..."

[January 27, 2004]Microsoft Files for Patents Related to XML Parsing and Word Processing. Applications for patents related to XML processing have been filed by Microsoft with various patent offices worldwide. EP1376387 "Word-Processing Document Stored in a Single XML File" has been filed in the European Patent Office and similarly with the Canadian Intellectual Property Office (CIPO) and Intellectual Property Office of New Zealand (IPONZ). US 20040006744 "System and Method for Validating an XML Document and Reporting Schema Violations" has been filed with US Patent and Trademark Office. Another, US 20030237048, covers a "Word Processor for Freestyle Editing of Well-Formed XML Documents." A Microsoft spokesman Mark Martin is reported to have said in response to questions: "While the XML standard itself is royalty free, nothing precludes a company from seeking patent protection for a specific software implementation that incorporates elements of XML." Acccording to the Microsoft Watch column, "some company watchers claim that the company's patent is attempt to prohibit competing desktop word-processing applications, such as those from Sun Microsystems, Corel and others, from being able to access Microsoft Word 2003 data stored in the XML format." Story updated 2005-03-18.

[January 23, 2004] "Software Patents 'Threaten Linux'." By Clark Boyd and Bruce Perens. In BBC News, UK Edition (January 23, 2004). ['Open source advocate Bruce Perens tells BBC technology correspondent Clark Boyd why the real threat to Linux and the open source movement is not from the SCO lawsuits, but from software patents. Perens: We're looking at a future where only the very largest companies will be able to implement software, and it will technically be illegal for other people to do so.'] "The good news is that SCO has pretty much exhausted any chance of being successful in court. Their legal discovery documents have not yielded sufficient evidence. But, let's go on to the future beyond SCO. The biggest challenge that will face us after that is software patenting. Software patents that are being accepted are not necessarily inventions, their definitions are overbroad. And you can never finish a patent search. The definitions are so broad, you can't ever be sure a company would or would not assert their patent on what you are doing. You have to consider engineers today spend their entire careers combining other people's intellectual property. And every small and medium sized enterprise is at risk regarding software patenting. That is a problem in Europe, because representatives to the European Parliament are pushing very hard for software patenting that would indeed shut out all small and medium businesses from the software development business, not just open source. We're looking at a future where only the very largest companies will be able to implement software, and it will technically be illegal for other people to do so. That's a very, very bad situation developing. We must do something so that there is reason for people to innovate, there is reason for people to invent, but that companies can execute without this constant fear that we will be sued into the ground regarding software patenting... We have all of the Linux-based software we need for 80% of the people in the world. The other 20% may use specialised applications that are not yet available in open source. And when I say 80%, that's all free software. What we're doing in 2004 is some bug removal, and some integration, not additional features, because the features are all already there... We are facing a problem in that there are two dominant companies in Linux distribution - Red Hat and Novell, which just purchased SuSE. We do not intend to let it stay that way. I'm leading a project called User Linux. The project aims to make a zero-cost Linux distribution, where people, if they want service, will pay for service on a services rendered basis. And we're establishing a global support network made of small companies, more than large ones, to make that work. And if we take the open source paradigm, which is a lot of little guys all around the world collaborating to make an organisation bigger than IBM or Microsoft, and we take that to the business sector, we may really invent something new here, taking open source into the economy to a degree it has never gone before..."

[January 23, 2004] "Microsoft Seeks XML-Related Patents." By David Becker. From CNET News.com (January 23, 2004) ['Microsoft applies for patents that could prevent competing applications from reading documents created with the latest version of Office. XML capabilities have been one of the main selling points for Office 2003. The patents could create a barrier for competing software, such as future versions of OpenOffice and StarOffice, from working with Microsoft's XML format.'] "Microsoft has applied for patents that could prevent competing applications from processing documents created with the latest version of the software giant's Office program. The company filed patent applications in New Zealand and the European Union that cover word processing documents stored in the XML (Extensible Markup Language) format. The proposed patent would cover methods for an application other than the original word processor to access data in the document. The U.S. Patent Office had no record of a similar application... The proposed patents apparently seek to protect methods other applications could use to interpret the XML dialect, or schema, Office uses to describe and organize information in documents. Microsoft recently agreed to publish those schemas and is looking at opening other chunks of Office code. Despite those moves toward openness, the patents could create a barrier to competing software, said Rob Helm, an analyst for research firm Directions on Microsoft. 'This is a direct challenge to software vendors who want to interoperate with Word through XML,' he said. 'For example, if Corel wanted to improve WordPerfect's support of Word by adopting its XML format...for import/export, they'd probably have to license this patent.' The patents likely wouldn't immediately affect the open-source software package OpenOffice, which uses different XML techniques to describe a document, Helm said. But they could prevent future versions of OpenOffice and StarOffice, its proprietary sibling, from working with Microsoft's XML format. Analyst Matt Rosoff, also with Directions on Microsoft, said the proposed patents fit with recent moves by Microsoft -- such as the licensing of FAT (file allocation table) systems and ClearType font technology -- to be more aggressive in licensing its intellectual property. 'In the last few months, we're sort of seeing more emphasis from Microsoft on turning its patents into a revenue source,' Rosoff said..." See reference following.

[January 23, 2004] "Word-Processing Document Stored in a Single XML File." European Patent Office. Patent Number: EP1376387. [Register] Publication Date: 2004-01-02. Date of filing: April 30, 2003. Inventor(s): Krueger Anthony D (US); Jones Brian M (US); Bishop Andrew K (US); Little Robert A (US); Sawicki Marcin (US); Snyder Daniel R (US) Applicant(S): Microsoft Corp (US). "A word processor including a native XML file format is provided. The well formed XML file fully represents the the word-processor document, and fully supports 100% of the word-processor's rich formatting. There are no feature losses when saving the word-processor document as XML. A published XSD file defines all the rules behind the word-processor's XML file format. Hints may be provided within the XML associated files providing applications that understand XML a shortcut to understanding some of the features provided by the word-processor. The word-processing document is stored in a single XML file. Additionally, manipulation of word-processing documents may be done on computing devices that do not include the word-processor itself." Claims include "a computer-readable medium having computer-executable components, comprising: a first component for reading a word-processor document stored as a single XML file; a second component that utilizes an XSD for interpreting the word-processor document, and a third component for performing an action on the word-processor document... A method for handling a word-processing document, comprising: parsing the document, wherein the document is contained within a single XML file and includes all of the instructions necessary to display the document according to how a word-processor would display the document; and interpreting the document according to an XSD... A system for creating, interpreting, and modifying a word-processor document stored as as single WPML file, comprising: a WPML file; a validation engine configured to validate the WPML file; and a word processor configured to read a WPML file created in accordance with a schema..." [see the "Claims" text]. See more complete description via the "esp@cenet database", including (1) description, (2) claims, (3) figures, and (4) original document (PDF, 109 pages). Also the archived/unofficial screen-scraped information.

[December 17, 2003] "Microsoft Wins HTML Application Patent." By Paul Festa. In CNET News.com (December 10, 2003). Microsoft has "won a patent for launching a certain kind of HTML application within Windows. The patent, 'Method and apparatus for writing a Windows application in HTML' (Hypertext Markup Language), describes Microsoft's way of opening up HTML applications in a window free of navigation and other interface elements, known as 'chrome,' and browser security restrictions. One example of an HTML application at work in Windows is the 'Add or Remove Programs' feature in the control panel. On a page about HTML applications on its Developer Network site, Microsoft described the technique as a way to harness HTML's power while bypassing its network and interface-related restrictions... Michael Wallent, a general manager in Microsoft's Windows division, said that Microsoft has no current plans to enforce the patent. Microsoft this month said it will liberalize its intellectual property licensing policy, letting other companies more easily use its patented technologies..."

[December 16, 2003] "Patents and Open Standards." By Priscilla Caplan. NISO. Originally prepared for publication in the NISO Information Standards Quarterly (ISQ) [ISSN: 1041-0031] Volume 14, Number 4 (October 2003). The document explores the tension between the push for standards and the pull to protect intellectual property rights.

[December 09, 2003] United States Patent 6,662,341: Method and apparatus for writing a windows application in HTML. Assignee: Microsoft Corporation (Redmond, WA, USA). Application #315858. Date filed: May 20, 1999. "A method, apparatus, and computer-readable medium for authoring and executing HTML application files is disclosed. An HTML application file is basically a standard HTML file that runs in its own window outside of the browser, and is thus not bound by the security restrictions of the browser. The author of an HTML application file can take advantage of the relaxed security. The author of the HTML application file designates the file as an HTML application file by doing one or more of the following: defining the MIME type as an HTML application MIME type; or using an HTML application file extension for the file. When a browser, such as the Internet Explorer, encounters one of the above, it processes the file as an HTML application file rather than a standard HTML file by creating a main window independent of the browser, and rendering the HTML in the main window..."

[November 26, 2003] "Do IT Patents Work?" By Andrew Updegrove. In Consortium Standards Bulletin Volume 2, Number 10 (November 2003). ['Editorial. From the days of VisiCalc until today, software -- and software patents -- have come a long way. The patent system itself, on the other hand, is still where it was before the PC was invented. It's time for a change.'] "Ask anyone whether they are satisfied with the current state of patents in the American IT world, and you are not likely to find many fans of the status quo. In our November News Cluster, we focus on two current events: the well-publicized Eolas victory over Microsoft, followed by the W3C's successful quest for a review by the PTO, and the barely noticed release by the Federal Trade Commission of a comprehensive report suggesting meaningful reforms to the patent system. Whether the combination of the outcry over the Eolas patent and the FTC's good work will be sufficient to spark a change remains to be seen. But those that have a serious stake in the game would be wise to seize upon this opportunity to speak out in favor of a serious effort to bring the patent system up to date. Perhaps the Founding Fathers would be proud of us if we do..." See: (1) "US Federal Trade Commission Report Calls for Patent Law and Policy Reform"; (2) "W3C Presents Prior Art Filing to USPTO and Urges Removal of Eolas Patent."

[November 6, 2003] "The Coming Software Patent Crisis." By Jack Schofield. In The Guardian (November 6, 2003). "Misery acquaints a man with strange bedfellows, as Shakespeare put it in The Tempest, and many people are now trying to help Microsoft in order to help themselves. Anyone who has watched the astonishing stupidity of American intellectual property developments will not be surprised to hear that it concerns a patent case. If the defence fails, web browsers may have to be modified to work with plug-ins in a new way, and web sites that exploit plug-in programs will have to be rewritten to match. This will cost web publishers -- who have committed no crime -- billions of dollars. The benefits to society will be close to zero... Whatever the merits of this particular case, there is plenty of evidence that the USPTO is granting patents in an area it is not equipped to handle..."

[October 28, 2003]W3C Presents Prior Art Filing to USPTO and Urges Removal of Eolas Patent. A letter from Tim Berners-Lee (Director, World Wide Web Consortium) to the Director of the United States Patent and Trademark Office (James E. Rogan, Under Secretary of Commerce for Intellectual Property) appeals for a "reexamination of the '906 patent in order to prevent substantial economic and technical damage to the operation of World Wide Web." The Eolas '906 patent granted by the USPTO is described as applicable to Java applets, browser plug-ins, ActiveX components, Macromedia Flash, Windows Media Player, and related "embedded program objects." The W3C letter cites evidence of prior art, described in a "Citation of Prior Art Under 35 U.S.C. § 301 and 37 CFR 1.501 In Relation to U.S. Patent Number 5,838,906," which renders the Eloas patent invalid and justifies reexamination of the '906 patent. The Berners-Lee letter argues that the "impact of the '906 patent reaches far beyond a single vendor and even beyond those who could be alleged to infringe the patent. The existence of the patent and associated licensing demands compels many developers of Web browsers, Web pages, and many other important components of the Web to deviate from the fundamental technical standards that enable the Web to function as a coherent system. In many cases, those who will be forced to incur the cost of modifying Web pages or software applications do not even themselves infringe the patent (assuming it is even valid). Given the interdependence of Web technology, those who wrote Web pages or developed software in reliance on Web standards will now have to retrofit their systems in order to accommodate deviations from standards forced by the '906 patent. These deviations will either reflect individual decisions by developers about how to avoid infringement liability, or will be an effort to be compatible with decisions individual vendors make in the course of their own re-design. What's more, the inevitable fragmentation and re-tooling costs caused by the ability to enforce this patent, which we believe to be invalid, cannot even be remedied by individual parties choosing simply to pay licensing fees to the patent holder."

[October 02, 2003] "MPEG LA Announces Plan for Joint Patent License for DRM Technology. DRM Reference Model and Call for Essential DRM Patents Represent First Step." Dividing the loot: MPEG LA has "issued a call for patents that are essential to digital rights management technology (DRM) as described in DRM Reference Model v 1.0. DRM refers to technologies for managing the authorized use of digital content. The purpose of the DRM Reference Model is to begin a process of evaluating and determining patents that are essential for DRM in order to provide users with convenient, fair, reasonable, nondiscriminatory access to a portfolio of essential worldwide patent rights under a single license... The DRM Reference Model represents the first phase in a continuing three-step process. Phase II is a call for patents to be evaluated for their essentiality with respect to the DRM Reference Model, and Phase III will be the convening of an initial patent holder group in order to decide the terms of a joint patent license... Version 1.0 of the Model will serve as a tool for the initial call for patents and an evaluation of their essentiality by independent patent experts resulting in the prompt formation of an initial patent holder group to decide terms of license..." For background to this problem, see: "Navigating the Patent Thicket: Cross Licenses, Patent Pools, and Standard-Setting," by Carl Shapiro.

[September 25, 2003] "Patent Politics." By Paul Festa. In CNET News.com (September 25, 2003). "During a recent meeting held at Macromedia's San Francisco headquarters, Silicon Valley companies asked a familiar question: What to do about Microsoft? But the strategy event, sponsored by the World Wide Web Consortium, differed significantly from so many others, at which participants have typically gathered to oppose the software giant's power. This time, Microsoft was the guest of honor. 'There's no doubt that there are some people who are happy to see Microsoft get nailed for anything,' said Dale Dougherty, a vice president at computer media company O'Reilly & Associates. 'But for those of us who are part of the Web, we wanted the browser to be on every desktop. And if it has to be a Microsoft browser, OK.' What a difference a patent suit makes. With one staggering loss at the hands of a federal court jury in Chicago, Microsoft has won the support -- if not the sympathy -- of nearly the entire software industry, from standards organizations to corporate rivals that are rushing to defend the company's Internet Explorer browser... the [court] verdict is increasingly interpreted as a potentially crushing burden on the Web, threatening to force significant changes to its fundamental language, HTML. Microsoft's competitors fear that Eolas' lawyers will target them next, and its partners -- such as Macromedia and Sun Microsystems -- worry that an enjoined IE browser would be prohibited from running their software plug-ins without awkward technology alternatives..."

[September 24, 2003] "Update: European Parliament Votes to Limit Scope of Software Patents. Issue Still Must be Debated by European Union Member States." By Paul Meller. In InfoWorld (September 24, 2003). "The European Parliament voted in favor of a law that goes some way toward limiting the scope for patents on software programs Wednesday. With 364 voting in favor, 153 against, and 33 abstentions, members of the European Parliament (MEPs) appear to have ignored heavy lobbying from both extremes in the debate by opting for a compromise solution. The Parliament was considering changes to the original text published by the European Commission (EC), the executive branch of the EU. Most of the changes were designed to tighten up the wording of the law to make it harder for people to obtain patents. For example, the MEPs agreed to an amendment which outlaws the patenting of algorithms. Another accepted amendment explicitly outlaws the patenting of business methods, such as the 'one-click' online shopping technique patented in the U.S. by Amazon.com. 'Inventions involving computer programs which implement business, mathematical or other methods and do not produce any technical effect beyond the normal physical interactions between a program and the computer, network or other programmable apparatus in which it is run, shall not be patentable,' the amendment read..."

[September 20, 2003]Standards Organizations Express Concern About Royalty Fees for ISO Codes. W3C, the Unicode Technical Committee, and INCITS (International Committee for Information Technology Standards) have recently published statements of concern about ISO's interpretation of law and policy on the collection of royalty payments for the use of ISO codes. The data elements in question involve several ISO standards that are often referenced in Internet infrastructure specifications and protocols, and code lists that are widely implemented in language-sensitive text processing software. The lists include ISO 639 'Codes for the representation of names of languages', ISO 3166 'Codes for the representation of names of countries and their subdivisions', and ISO 4217 'Codes for the representation of currencies and funds'. ISO has clarified that "generally, software developers or commercial resellers requesting permission to embed the data elements contained in an ISO Code in their products for resale will be asked to purchase the Code in electronic format and pay either an annual fee or a one-time fee and any applicable maintenance fees required." The letters from W3C, UTC, and INCITS have appealed to ISO and ANSI for reversal of their interpretation and policy.

[September 11, 2003] "IE Patent Endgame Detailed." By Paul Festa. In CNET News.com (September 09, 2003). "Microsoft has suffered another legal setback in the patent dispute with software developer Eolas and is now advising Web authors on workarounds, as new details emerge of its plans to tweak Internet Explorer. A federal judge last week rejected Microsoft's post-trial claim that Eolas had misrepresented the facts in the patent case, which claimed the software giant had stolen browser technology relating to plug-ins... last week's loss on claims of 'inequitable conduct' heightened the sense that not only Microsoft but the entire Web may soon be forced to make substantial adjustments -- and that pages around the Web and on private intranets will have to be rewritten to work with an altered IE. 'If you're currently using a plug-in, you will have to change your pages quite significantly,' said one person familiar with Microsoft's post-verdict plans. 'There might be tools to help you do so, but currently they don't exist.' Regardless of whether the court orders Microsoft to change IE, the software giant has been conferring with its own engineers and those of companies that rely on the browser's ability to automatically launch and display multimedia programs with plug-ins -- an ability the court held to be, in its current form, an infringement of the Eolas patent. Now Microsoft, while expressing optimism that it will ultimately prevail over Eolas in the courts, is advising Web authors to take precautions and prepare for a post-Eolas world... While declining to comment on the specifics of the meeting or its plans for IE, Microsoft did warn that the Eolas patent threatened more than just Internet Explorer. 'This is not an issue just for IE,' said Wallent. 'This is a potential issue for Netscape Navigator, for Opera and for other browser vendors. This is an industry issue.' One attendee of the meeting who asked not to be named said that while Microsoft's workarounds were technically promising, their legal soundness was uncertain. Worse, this attendee said, the implementation of the workarounds would require a huge amount of work on the part of Web authors..."

[September 08, 2003] "Patent Riots of 2003." By John C. Dvorak. In PC Magazine (September 2, 2003). "A strong protest movement has begun in Europe regarding software patents. It could easily become a juggernaut that will make legislative bodies reconsider the tendency to approve dubious copyright and patent laws that benefit nobody but large corporations... For now, the issue is how oppressive the laws are surrounding software patents. And remember that before 1980 a software patent was incredibly rare. The protest fomenter is the Foundation for Free Information Infrastructure (FFII) based in Germany. It has organized a lot of physical protests and now is promoting online protests to shut down Web sites. Much traffic from shuttered sites gets redirected to the protest page. A laundry list of examples, the list of horrors' details many of the complaints. None of this is a surprise. The tendency to allow patents for just about any concept has been encouraged by governments worldwide. That lawyers are behind this is no coincidence. It's is a pure bonanza for them. Unfortunately, it has the potential to kill innovation and progress. And clearly this is not what the original concept of patents was all about. I was the moderator for a Commonwealth Club debate between fabled Law Professor Larry Lessig and Todd Dickinson a couple of years ago. Dickinson was the director of the US Patent and Trademark Office under Clinton and a huge promoter of the idea that business models should be patented. From what I could tell, he thought everything should be patented. So I asked him if a football play could be patented. He said probably not, since there had to be something technological about it to qualify. 'But what if this was a timing play?' I asked. My jaw dropped when he said it could probably get a patent! I was stunned at such an outrageous and stupefying notion. What can you say to a guy like this?" OpEd Note: the verdict about patenting a football timing play is reminiscent of statement also from Q. Todd Dickinson as reported by Tim O'Reilly, who asked Dickinson how he (as a lawyer) would feel about a lawyer getting a patent on an argument. Dickinson: If it was new and nonobvious, I wouldn't have a problem with it at all. 'Stupefying' indeed.

[September 01, 2003] "Protests Delay Software Patents Vote." By Matthew Broersma. In CNET News.com (September 1, 2003). "The European Parliament has delayed voting on a controversial software-patents directive, after protests and criticism by computer scientists and economists. The vote, originally planned for Monday, will now take place at a plenary session starting September 22, [2003]. Software patents have been likened to allowing a monopoly on the ideas behind stories, and opponents of the proposed Directive on the Patentability of Computer-Implemented Inventions claim it would effectively allow unlimited software patents. In the United States, large companies acquire arsenals of patents that they use to protect themselves from upstart competition... A demonstration last week in Brussels, Belgium, that attracted more than 400 participants was organized by the Foundation for a Free Information Infrastructure (FFII) and Eurolinux, among other groups, which also persuaded several hundred Web sites to black out their front pages in protest. A June vote on the proposal was put back amid criticism by MEPs that the legislation would institute a U.S.-style patent atmosphere that would be detrimental to European small businesses and open-source software developers..." See similarly "Software Patent Vote Delayed" (June 30, 2003).

[August 28, 2003] "EU Software Patent Plan Draws Fire. Opponents Claim Proposed Law Could Squeeze Small, Medium-Size Companies Out of Market." By Laura Rohde. In InfoWorld (August 28, 2003). "A group of economists has blasted a proposed European Union (EU) law on software patents, characterizing it as damaging to technological innovation and Europe's software industry. The European Parliament is scheduled to vote on the 'patentability of computer-implemented inventions' directive on Monday... In a highly critical open letter to EU lawmakers issued earlier this week, the group of 12 economists from such European and U.S. institutions as the University of London, the Oxford Internet Institute and Stanford University urged that the directive be rejected in its present form. The EU is attempting to establish an overarching patent standard for computer-implemented inventions, which includes but is not confined to software, bringing into line the different interpretations being given by different national courts throughout Europe. The issue has been highly contentious, with supporters of open source and free software asserting that copyright laws are enough to protect business innovations and calling for all patents to be outlawed, while large businesses push for a U.S.-style approach allowing for so-called business methods to be patented..."

[June 30, 2003] "Software Patent Vote Delayed." By Matthew Broersma. In CNET News.com (June 30, 2003). "The European Parliament, facing mounting controversy over U.S.-style software-patenting legislation, has delayed a key vote until September. A Monday vote on a controversial software patents proposal in the European Parliament has been put back until September, amid criticism that the legislation would institute a U.S.-style patent regime that would be detrimental to European small businesses and open-source software developers. The proposed software-patenting legislation is the result of a European Commission effort to clarify patenting rules as they apply to 'computer-implemented inventions,' a term that includes software. The patent offices of various EU member states currently have different criteria for accepting the validity of software-related patents, a situation that the commission's proposal aims to remedy. However, opponents of the suggested legislation charge that its ambiguity would effectively allow most software to be patented, a situation that currently exists in the United States. Critics have compared that situation to allowing a monopoly on the ideas in novels... The Foundation for a Free Information Infrastructure, a software developer lobbying group, hailed the delay as a victory for the democratic process..."

[June 09, 2003] "Bell Tolling for PNG Graphics Format?" By Paul Festa. In CNET News.com (June 09, 2003). "A patent underlying one of the Web's most popular graphics formats is set to expire later this month, raising the question of whether a rival, open format, created as a royalty-free alternative, will become obsolete. The situation has also rekindled debate about patents, innovation and the freedom of communication. In the United States, the patent for the Lempel-Ziv-Welch, or LZW, compression algorithm expires June 20, 2003. LZW forms the basis of the popular GIF (Graphics Interchange Format) design. LZW patent owner Unisys said it has no plans to apply for an extension to the U.S. patent, or to patents in Canada, Japan, the United Kingdom, Germany, France and Italy -- though it will enforce those latter patents for another year, until they too expire. That development means that the rival PNG (pronounced 'ping'), or Portable Network Graphics, format will soon lose its original reason for being... Last week, the World Wide Web Consortium (W3C) announced its proposed recommendation for the second edition of the PNG format, with a call for public comment through June 23, 2003. 'The original impetus for designing PNG was indeed because something needed to be done urgently,' said Chris Lilley, graphics activity lead for the W3C. 'Everyone had been using this format (GIF) and then suddenly we couldn't use it anymore. (But) you always want something a bit better and never get around to it...(and) this provided the impetus -- and PNG is better than GIF.' 'The big issue is not whether you use GIF or PNG,' said Don Marti... the big issue is whether you let a patent holder become a censor for your communications.' Conflict over patents has roiled standards organizations, with the W3C recently repudiating the use of patented technologies in its recommendations, and the Internet Engineering Task Force (IETF) reserving the right to implement them. Marti, who in 1999 organized a 'Burn All GIFs Day' protest against Unisys, compared the enforcement of software patents on communications software to the colonial-era Stamp Act. That act, passed in 1765 by the British Parliament, imposed a tax on paper and other writing materials used in the American colonies and was an impetus for the eventual revolution. 'A patent on communications, or on a format or a standard for communicating, is just like a stamp act,' said Marti. 'As soon as you decide to use a patented format to communicate, you give the patent holder a dangerous level of power over you'..."

[May 21, 2003] "W3C Makes Patent Ban Final." By Paul Festa and Lisa M. Bowman. In CNET News.com (May 21, 2003). "The Web's leading standards body on Tuesday finalized a patent policy banning the use of most royalty-bearing technology in its technical recommendations, an issue that sparked a clash between open-source advocates and software makers. The Royalty-Free Patent Policy, announced by the Patent Policy Working Group of the World Wide Web Consortium (W3C), has changed little from a draft released eight weeks ago. In shutting fee-bearing patents out of standards development in all but exceptional cases, it marks a compromise between open-source advocates and proprietary software companies. Patents have been a flashpoint in a battle between the open-source community and proprietary software companies. Some proprietary software makers cash in on large patent portfolios by requiring licensing fees and may be reluctant to give away the rights to intellectual property after investing time and money creating the technology. On the other hand, many in the open-source community believe patents impede the development process and can clog the adoption of standards... Bruce Perens, a prominent patent foe and a participant in the W3C's deliberations, applauded the move, while warning that the consortium had left its process vulnerable to 'submarine' patents. 'It's not bulletproof,' Perens said in an interview with CNET News.com Wednesday. 'But it's an improvement.'

[May 20, 2003] W3C Readies New Tech Patent Policy. It Hopes to Stop Vendors' Patent Claims From Slowing Web Standards Work." By Carol Sliwa. In Computerworld (May 19, 2003). "W3C is poised to unveil a formal policy for dealing with technology patents that have the potential to block the development of interoperable Web standards. Tim Berners-Lee, director of the Cambridge, Mass.-based W3C, said a decision on the patent policy is due to be announced 'very shortly,' now that the organization's management team has reviewed feedback collected during a public comment period that ended April 30, 2003... A W3C working group has spent more than three years developing a precisely defined patent policy to replace the 'minimalistic' and 'very loose' provisions that currently require members who know of patent claims relevant to ongoing standards work to disclose them, said Daniel Weitzner, chairman of W3C's patent policy working group. Weitzner said the policy drafted by the working group reflects the 'overwhelming goal' of producing standards that can be implemented royalty-free. But the group also included an exception provision that will make it possible for members to consider alternate licensing terms when it's deemed impossible to meet the royalty-free goal, he said. That reflected a desire for flexibility as well as the group's attempt to acknowledge the concerns of those who favor a so-called reasonable and nondiscriminatory model that permits the collection of patent licensing fees, Weitzner said. The need to establish a formal policy became apparent as some patent holders started to assert claims to technology being used as part of proposed Web standards. One notable case involved a claim from Seattle-based Intermind Corp., now known as OneName Corp., that the W3C's Platform for Privacy Preferences might infringe on a patent it held. More recently, the W3C's patent policy became a hot topic of discussion among some W3C members who have speculated why IBM, Microsoft Corp. and other vendors have been submitting some key Web services standards proposals to the Organization for the Advancement of Structured Information Standards (OASIS) instead of the W3C... Weitzner said the exception provision 'was an effort to address the concerns of a number of members.' He added that the proposed exception procedure was designed to be hard to use 'because the working group didn't want it to be used often'..." See: "W3C Approves Patent Policy Supporting Development of Royalty-Free Web Standards."

[April 28, 2003] "Scientists Protest EU Software Patents." By Matthew Broersma. In CNET New.com (April 28, 2003). "A group of high-ranking scientists is petitioning the European Parliament to prevent the patenting of algorithms and software ideas, the latest twist in the European Commission's attempts to create a unified patent regime for member states. The petition, signed by scientists from around Europe, was delivered Monday, ahead of a vote by the European Parliamentary Committee on Legal Affairs and the Internal Market (JURI), which is the latest committee to examine the commission's patent proposal. The fate of the proposed patent plan could have a dramatic effect on the way software is developed in the EU, with many developers and small businesses fearing a U.S.-style system in which large companies with thousands of software-related patents are able to force smaller competitors to pay for intellectual property licenses. Thirty-one scientists, including three from Britain, signed the petition earlier this month, criticizing the proposal and demanding that the European parliament adopt a text that would "make impossible, clearly, for today and tomorrow, any patenting of the underlying ideas of software (or algorithms), of information processing methods, of representations of information and data, and of interaction between human beings and computers'..."

[April 23, 2003] "Northrop's Latest Patent: Legitimate or Just 'A Silly Claim'? The Worldwide i-Technology Community Responds." By Jeremy Geelan. In XML Journal (April 23, 2003). "In an odd twist, even though the WWW was conceived by Tim Berners-Lee in 1989 and the first public release of a WWW client and server was in 1991, such 'prior art' (as it is known in patent circles) seems not to have discouraged New Jersey-based Charlie Northrup from claiming patent number 6,546,413 ["Access Method Independent Exchange Using a Communication Primitive"]. The result -- for the US Office of Patents and Trademarks granted it after many years of deliberation -- according to many commentators including Maureen O'Gara of LinuxGram, is that Northrup now holds the patent on nothing less universal than what we now call 'Web services'... The claim that Northrup's ideas on Web services are the earliest is "rot," according to Uche Ogbuji of Fourthought, Inc. Ogbuji calls it "a silly claim'... Tim Bray, co-inventor of XML, is equally dismissive. "Charlie contacted me a couple of times [and] I told him that in my view that patent should not have been granted, and would not stand up in court, due to having failed the 'obviousness' test. Clearly he disagrees." Bray adds a very strong cautionary note. "If [Northrup] managed to enforce his claim the consequences would be disastrous; it would become impossible to have Open Source implementations of key pieces of the infrastructure. This would be harmful, perhaps fatal, to the grand plans of those who want to deploy Web services everywhere." Veteran markup specialist Len Bullard isn't any more sanguine than Bray. "I can't understand such a patent," he says. "There is too much prior art and research in this field. Web services are coming about as a result of standardization, not innovation." Bullard points out an odd precedent, on the other hand. "The patent on stylesheets held by Microsoft," he notes, "has never been challenged although the prior art again, is well documented. And the Sun patent on hyperlinking was the same kind of patent: bogus but unchallenged." "Unfortunately," Bullard continues, "our patent system has come down to a contest of money, lawyers, and stamina because the patent office does not have the expertise or resources to verify obscure claims'..." [Patent application #211266 was filed December 14, 1998, and patent #6,546,413 was granted April 8, 2003. Abstract: "The present invention provides a virtual network, sitting 'above' the physical connectivity and thereby providing the administrative controls necessary to link various communication devices via an Access-Method-Independent Exchange. In this sense, the Access-Method-Independent Exchange can be viewed as providing the logical connectivity required. In accordance with the present invention, connectivity is provided by a series of communication primitives designed to work with each of the specific communication devices in use. As new communication devices are developed, primitives can be added to the Access-Method-Independent Exchange to support these new devices without changing the application source code. A Thread Communication Service is provided, along with a Binding Service to link Communication Points. A Thread Directory Service is available, as well as a Broker Service and a Thread Communication Switching Service. Intraprocess, as well as Interprocess, services are available. Dynamic Configuration Management and a Configurable Application Program Service provide software which can be commoditized, as well as upgraded while in operation."]

[April 16, 2003] "Will Patents Pillage Open Source?" By Steven J. Frank. In CNet News.com (April 16, 2003). "Is open-source software just one patent away from annihilation? Many people think so and point to the ominous convergence of two trends: the widening availability of software patents and the willingness of intellectual-property owners to challenge distributors of open-source software. If someone can obtain a patent to key features of the Linux kernel, couldn't that person bring the entire open-source community to its knees by threatening industrywide legal action? [...] The open-source community has at its disposal a wealth of information on such technology, putting it in a good position to invalidate misbegotten software patents. Moreover, a community of developers could collaborate to quickly develop a noninfringing work-around. Such threats, added to the high costs of litigation, questionable returns and the prospect of widespread rejection of open wallets for open source, will likely engender hesitation among most patent owners... With more and more innovation companies retreating even in circumstances traditionally justifying license royalties, the prospect that patents could doom open source grows ever more unlikely..."

[March 21, 2003] "W3C Patent Policy Draft." By Tim Bray. In ongoing (March 19, 2003). "The latest draft, published today, is a landmark. You can't possibly imagine the number of hours of hard thinking and nasty wrangling that have gone into producing it. My personal take is that it's about done and it's good enough and we're not going to end up with anything better... To start with, it's really important to understand that these issues are not simple. I think that most responsible members of the Web communities know what effect we'd like to achieve, but the legal and historical backdrop is insanely complex and achieving the effect you want to is far from easy. Royalty-Free is the Way to Go. The Web is unique and special in that anyone can read up on HTTP or HTML or XML or whatever and start writing software to process them, and not have to worry about paying anyone a royalty. Lots of other areas of technology just aren't like this. If you want to build a DVD player, or a network router, or a VLSI test rig, or many many other things, you have to cough up some serious money for patent rights first. That's one reason why there is lots of Open Source web softwre, but no Open Source DVD players. And, it's one of the nice things about working in Web space. VoiceXML is the Villain The issue that really forced the W3C to think about this was VoiceXML. This is an XML tagset for spoken dialogues, i.e. you say to the vending machine 'Two croissants please', the machine says 'That'll be $4.82, how would you like to pay', you say 'Visa', the machine says 'Insert your Visa card under the flashing light please', etc. VoiceXML was originally cooked up by the 'VoiceXML Consortium', which includes several well-known big names in the telecom and cellular space. And several of them had patents which they claim covered it so you wouldn't be able to use it without a license..." See "W3C Releases Proposed Royalty-Free Patent Policy for Review."

[March 19, 2003] "W3C Seeks Royalty-Free Standards. Final Review Of Draft Begins." By Paul Krill. In InfoWorld (March 19, 2003). "Looking to formalize its royalty-free standards position in May, the World Wide Web Consortium on Wednesday began the final review period for its patent policy. While emphasizing royalty-free Web infrastructure standards, the W3C plan does allow for exceptions to the policy in rare circumstances such as when a technology needs to be included in a specification but is not available on a royalty-free basis. 'It's a policy which is by default royalty-free [but] by exception allows the consideration of technology that's available other than on a royalty-free basis, and I believe it is a policy which is acceptable to the open-source community,' said Donald Deutsch, vice president of standards and strategy at Oracle and a participant in the working group. The policy, which is subject to a public review period through April 30, is intended to reduce the threat of blocking patents, in which a particular entity seeks royalties for implementations of W3C specifications because of a contributing technology. W3C Director Tim Berners-Lee will then decide whether to issue the policy as a formal W3C recommendation, the final stage of approval. W3C, in formulating its policy, is attempting to prevent patent claims from inhibiting development of its industry specifications, said Daniel Weitzner, chairman of the patent policy working group in Cambridge, Mass. , which developed the policy. 'What has happened recently is we have had more and more situations in which patent claims have impeded the development of new Web infrastructure,' Weitzner said. He cited an incident in which a vendor sought a royalty for use of its technology in the W3C P3P (Platform for Privacy Preference), a standard for machine-readable privacy policy. 'What happened was, first of all, that discouraged a lot of people from putting effort into the work if the money was going to go to just one company,' Weitzner said. The patent policy requires patent disclosures by W3C members when they are aware of their patents being essential to implementation..."

[March 07, 2003] "Web Services in Serious Jeopardy. [Reality Check.]" By David Berlind. In ZDNet Tech Update (March 06, 2003). Includes sections: 'BPEL4WS vs. WSCI' and 'Penchant for patents?'. From the latter: Let's suppose that BPEL4WS becomes the de facto standard, by virtue of BEA's, Microsoft's, and IBM's support for BPEL4WS in their application servers, which happen to be the application server market's three leading products. The three intellectual property owners would be in the driver's seat not only when it comes to Web services, but for a portion of the Web itself. It will be exactly the scenario that I've warned about, where the intellectual property owners of one critical protocol could end up in control of an important part of the Internet. At the very least, if you end up being seduced by the promise of standards by using the two Web services protocols (SOAP and WSDL) that IBM and Microsoft shoved down the W3C's throat, it may not be long until you find out that your investment in open standards has locked you into using a proprietary technology. As I have posited before, following a path where you eventually find yourself locked into a proprietary technology puts the intellectual property owner in control of a lot of things, including cost..."

[March 07, 2003] "Has Jeff Bezos Patented E-Mail Discussion Groups?" By Cade Metz. In PC Magazine (March 05, 2003). "First he received a patent for 1-Click e-commerce. Now he has one for e-mail discussion groups. Last Tuesday, February, 25, the US Patent and Trademark Office issued a new patent to Jeff Bezos, the CEO of online retailer Amazon.com, granting him exclusive rights to 'a method and system for conducting an electronic discussion relating to a topic.' As was the case when he and three other Amazon executives patented the company's 1-Click ordering system, Bezos has gained control of a technology that may not seem particularly innovative to the everyday Internet user. The system described in the patent works a lot like the software available at Yahoo! Groups, CoolList, Topica, and myriad other Web sites. You could even argue that it operates on the same principle as the mailing list servers, or listservs, that have been around since the mid-eighties. Basically, it lets several people hold a discussion over e-mail. One person uses the system to set up a discussion group that others join. Participants then use the system to broadcast messages to the rest of the group. As each message goes out, the system tacks on an organized history of previous messages..." [United States Patent #6,525,747. February 25, 2003 (application filed August 2, 1999). Granted to Jeffrey P. Bezos, Seattle, WA. "Method and system for conducting a discussion relating to an item: A method and system for conducting an electronic discussion relating to a topic. The discussion system of the present invention receives a selection of an item that is to be the topic of the discussion. The discussion system then receives comments relating to the selected item and generates a message that includes a description of the selected item and the received comments. The discussion system then sends the generated message to participants of the discussion. The discussion system receives from a participant who received the generated message additional comments that are to be added to the generated message. The discussion system sends the generated message along with received additional comments to the participants of the discussion."]

[March 03, 2003] "Dual Tragedies: IP Rights in Industry Standards." By Daniel Lin (Kirkland & Ellis). In IEEE Computer Volume 36, Number 2 (February 2003), pages 25-27. "Companies often participate in a cooperative standard-setting effort to minimize research and development risks. However, the industry's aggressive use of patents forces standard-setting organizations (SSOs) to struggle with producing the best standard technically while encouraging its widespread adoption by limiting the proprietary technology that users must license. To balance these interests, many SSOs require members to disclose any patents related to a proposed standard. These disclosures potentially expose technical and market strategies to competitors. By illuminating this problem, the 'tragedy of the commons' and 'tragedy of the anticommons' can help SSOs implement disclosure policies that reduce member burdens and risks, thereby encouraging participation in creating high-quality standards... The 'tragedy of the commons' occurs because each participant seeks to maximize its own gain by incorporating its technology into the standard without considering the negative aggregate effect on the standard. Thus, the standard becomes under-utilized, creating a 'tragedy of the anticommons,' in which multiple owners have a right to exclude others from using the resource and no one has an effective privilege of use. Rather than using the SSO-sponsored standard, potential users might find that developing their own alternative solution or licensing a proprietary solution from a third party costs less. As such, even if the SSO succeeds in developing the best 'technological' standard by incorporating the best patented technology from its participants, the standard may ultimately fail to become widely adopted..."

[March 03, 2003] "Experts: Copyright Law Hurts Technology." By Robert Lemos. In CNET News.com (March 01, 2003). "Attempts to protect copyrighted material have strayed from their original purpose, say lawyers, technologists and academics, but few can agree on the solution. Speaking Friday at a University of California at Berkeley conference on the law and policy of digital rights management, experts from all circles seem to agree that more is going wrong than right with the current approach to protecting digital content. Moreover, they argue that current laws such as the Digital Millennium Copyright Act (DMCA) -- which makes cracking copyright protections illegal, even when otherwise acceptable under other laws -- are serving the extremes, not the mainstream populace. 'There has to be a way between the lunatics at the two extremes,' said Larry Lessig, a law professor at Stanford University and well-known opponent of the DMCA. 'We need to build a layer of reasonable copyright law on top of this background of unreasonable extremism.' Such sentiments for loosening the control of copyright holders are finding far more fertile ground these days, in the wake of a number of lawsuits that illustrate the dangers of the DMCA. Far fewer people believe that the DMCA is an appropriate method to stave off digital pirates in the Internet age David Farber, law professor for the University of Pennsylvania, said that digital rights management systems need to be in place to protect not the minority of big corporations but the masses of people. 'I am not talking about protecting the media companies from people using their content,' he said. 'I am concerned with protecting my information and finding out who made copies of it.' Until copyright policy tilts back to the populace, people will likely resist such systems, said John Erickson, a system program manager for Hewlett-Packard Labs, who spoke on one of four panels Friday. 'We are taking the human being out of the equation...and putting a chastity belt on technology,' he said. He stressed that laws and technology, such as digital rights management, need to take constitutional issues into account. 'There is not social governance of what goes into a rights management language,' he said. 'If we are to have the regimes, we need to figure out how to have people in the loop'..." See: (1) Berkeley DRM Conference website; (2) BLCT Digital Library publications; (3) "XML and Digital Rights Management (DRM)."

[February 21, 2003] "Sun Trumpets Royalty-Free Web Services Specs. Company Challenges Microsoft, IBM." By Paul Krill. In InfoWorld (February 20, 2003). "Royalty-free industry specifications are needed to enable Web services to fulfill its potential as a mechanism for business process integration on a massive scale, Sun officials stressed during a Sun 'Chalk Talk' session in San Francisco on Thursday. Any requirement that specific vendors be paid royalties for use of their technologies in standardized Web services specifications could stifle the growth of Web services, said Mark Bauhaus, Sun vice president of Java Web services. Sun wants its royalty-free position to be accepted by other members of the Web Services Interoperability Organization (WS-I) and is running for election to a seat on the WS-I governing board in March. Specifically, Microsoft and IBM need to embrace royalty-free Web services, specifications, according to Bauhaus. With the vast increase in devices accessing the Internet, which could eventually number into the billions, and the low cost of Internet access, Web services are poised for dramatic growth as a business process integration mechanism for a variety of applications, Bauhaus said, but Web services must be royalty-free and based on open standards, and specifications must be converged. 'The headlines that we're writing now are about Web services. Is it going to be royalty-free or is someone going to hijack it?' Bauhaus said. He noted that IBM and Microsoft have produced a proposed specification for automating interaction between Web services, called Business Process Execution Language for Web Services (BPEL4WS). This proposal has not yet been submitted to a standards organization. Sun has a competing proposal, Web Services Choreography Interface (WSCI), being examined by the World Wide Web Consortium (W3C)..."

[February 10, 2003] "IBM Published Patent Application Disclosure and Licensing Statement Regarding the OASIS Web Server for Remote Portlets (WSRP) Version 1 Specification." An IPR statement from IBM on WSRP version 1 dated January 29, 2003 grants reciprocal RF license terms: "... IBM will, upon written request, provide a nonexclusive, royalty free patent license, with other reasonable and nondiscriminatory terms and conditions, for those patents issued to IBM which contain claims essential, in IBM's judgment, to implementations of the Specification and for which IBM is able to provide patent licenses (including patents issuing on the published patent applications disclosed above), for implementing the Specification. This patent license is available to all entities. If a party requesting a patent license also has claims essential to the implementation of the Specification (hereafter 'Requestor Claims'), IBM will grant this patent license only if the recipient, in return, will grant IBM a reciprocal license, with substantially identical terms and conditions, under the Requestor's Claims. If a party has a license with respect to IBM Essential Claims and acquires, by any means, one or more Requestor Claims and refuses to grant IBM a reciprocal license (with substantially identical terms and conditions) under such Requestor Claims, IBM may suspend or revoke the license IBM granted to such party..." Announced on February 10, 2003 by Thomas Schaeck; see the full context for details. A similar (less formal) "RF" statement was made by IBM with respect to BPEL4WS.

[January 22, 2003] "SBC Tries to Enforce Patent on Frame-Like Browsing." By Grant Gross. In InfoWorld (January 22, 2003). "SBC Intellectual Property owns two U.S. patents on a Web site navigation tool called a 'structured document browser' and it is asking MuseumTour.com and other sites to pony up licensing fees. The structured document browser's definition sounds like the technique of using frames to link to other documents on a Web site, which would be used by hundreds of thousands, if not millions, of sites. SBC Intellectual Property President Harlie Frost said the patent claims are 'related to frames' before referring more questions to SBC's public relations representatives... Several Internet activists, including members of the free software movement, have for years blamed the U.S. Patent and Trademark Office for granting patents on technologies that were already widely used. The most publicized case was in September 1999, when Amazon.com was granted a patent for its one-click shopping service. Amazon.com Chief Executive Officer Jeff Bezos later called for patent reform..." Abstract for 'Structured document browser' [6,442,574]: "A structured document browser includes a constant user interface for displaying and viewing sections of a document that is organized according to a pre-defined structure. The structured document browser displays documents that have been marked with embedded codes that specify the structure of the document. The tags are mapped to correspond to a set of icons. When the icon is selected while browsing a document, the browser will display the section of the structure corresponding to the icon selected, while preserving the constant user interface." Other details in The Register. Note the Len Bullard comment 2003-01-23: "Another one sillier than the last one... A patent on frame-based navigation... This is becoming an issue for the US at the national electorate level. It is time for organizations to begin to talk to candidates for high office about real patent reform, what is required and what it will take to get it." The US mindset on copyright is similarly in need of reform according to Robin Gross , Director of IP Justice.

[January 17, 2003] "Facts to Support RAND?" Rick Jelliffe's post in response to Claude L (Len) Bullard, Are the trends you think applicable from the W3C spec adoption sustainable in the future? IOW, is that a merely historical or an inevitable trend? [Rick:' "As more countries assert their independence from US IPR law on technologies of national importance, I think there is more chance that entertainment-based IPR technology will be allowed as a trade-off against the negation of IPR on fundamental Internet technologies. Non-US governments will say 'We simply will not accept IPR on AIDS drugs and foundation internet protocols; but to keep US trade dogs at bay, we will stop piracy of the Lion King.' I think US people and people who travel in business rather than technical/policy circles, should not underestimate the bad taste that US IPR impositions have to the rest of the world. W3C would be crazy to get involved in this political dispute by allowing non-RF technology in its specs..." See the XML-DEV thread and the catalyst, David Turner's 2003-01-16 post "MS views on Last Call Patent Policy Draft."

[January 14, 2003] Royalty-Free License Terms in Microsoft's Web Services Security IPR Disclosure. In part: "... If an OASIS Standard incorporating this Contribution is adopted by OASIS pursuant to the WS-Security Technical Committee Charter at the time the Contribution was submitted, Microsoft will grant, for the limited purposes of implementing and complying with the required portions of the resulting OASIS Standard, a ROYALTY-FREE, worldwide, non-sublicenseable, non-transferable, license to any such Necessary Claims to implement the Contribution under reasonable and non-discriminatory terms and conditions, provided a reciprocal patent license is granted to Microsoft and other implementers of the OASIS Standard..."

[December 2002] "FSF's Position on Proposed W3 Consortium 'Royalty-Free' Patent Policy." Free Software Foundation. Updated 4-December-2002 or later. "The Free Software Foundation, represented by its General Counsel, Professor Eben Moglen of Columbia University Law School, participated in the W3 Consortium Patent Policy Working Group from November 2001 through the current Last Call draft. The Foundation regards the current Last Call draft, which proposes the adoption of a 'royalty-free' or 'RF' patent policy, as a significant step in the direction of protecting the World Wide Web from patent-encumbered standards. But the proposed policy is not an adequate final outcome from the Foundation's point of view. The proposed policy permits W3C members participating in W3 technical working groups to commit their patent claims 'royalty-free' for use by implementers of the standard, but with 'field of use' restrictions that would be incompatible with section 7 of the GNU General Public License. Such 'field of use' restrictions, in other words, would prevent implementation of W3C standards as Free Software. Section 7 of the GNU GPL is intended to prevent the distribution of software which appears to be Free (because it is released under a copyright license guaranteeing the freedoms to use, copy, modify, and redistribute) but which cannot, in fact, be modified and redistributed because of patent license restrictions that limit the use of patent claims practiced by the software to a particular purpose..."

[December 20, 2002] "W3C, Vendors Dust Down Over WS-Choreography?" By [Gavin Clarke]. In The Register (December 20, 2002). "A New Year stand-off is brewing, after a leading standards group kicked off its ratifcation procedure for Web services choreography but three major vendors remained aloof from the process, Gavin Clarke writes. The World Wide Web Consortium (W3C) is creating a working group to develop a standard for WS-Choreography, a proposed means to describe the flow of messages exchanged by a Web service in a particular process. Approximately six specifications are floating around the industry, and the W3C said it hopes to consolidate at least three. However, the owners of one major specification -- Business Process Execution Language for Web services (BPEL4WS) -- are keeping mum over which standards body will receive their offering. BPEL4WS is owned by BEA Systems Inc, IBM and Microsoft Corp. It is feared a failure to integrate different choreography specifications will create different implementations and limit web services uptake. Oracle Corp, helping push W3C's efforts, called this a 'worst case scenario'. 'All that does is confuse the market place,' Oracle vice president of standards strategy and architecture Don Deutsch told ComputerWire. Licensing of the vendors' intellectual property (IP), used in web services specifications, is believed to be a potential sticking point in this issue. IP licensing emerged as the web services bogey man in 2002. It is believed vendors who do not license IP under a Royalty Free (RF) mechanism leave the door open to charge royalties at a later date under the Reasonable And Non-Discriminatory (RAND) model... Furthermore, as IBM, Microsoft and VeriSign prepared to go public with WS-Security, one Microsoft W3C representative voiced concern that any public W3C technical discussions would 'create IP risks' for members for any related specifications... [IBM's Karla] Norsworthy denied Microsoft and IBM went forum shopping over WS-Security, saying OASIS was a suitable group given its existing work on the related Security Assertion Mark-up Language (SAML). Redwood Shores, California-based Oracle called IP a 'red herring' as vendors instead choose forums on the basis of how much they can control development of a proposed specification. Oracle is a big player behind W3C's WS-Choreography proposed working group. Deutsch said: 'People make decisions for various reasons to do with maintaining control of the specification.' He added, though, W3C is the best place for WS-Choreography because of its use of RF. 'If your objective is to anoint your technology then your decision will be to go somewhere else because you won't want a level playing field,' Deutsch said. 'We believe in encouraging IBM and Microsoft to do the right thing, and bring BPEL4WS to the W3C table,' Deutsch said..."

[December 11, 2002] "IBM, BEA Take Royalty-Free Stance on BPEL4WS." By Paul Krill. In InfoWorld (December 11, 2002). "Removing a potential barrier to Web services choreography standards efforts, an IBM official on Wednesday pledged that the vendor will not seek royalties for its contributions to the BPEL4WS (Business Process Execution Language for Web Services) proposal. BEA Systems, a co-author of BPEL4WS, released a statement with a similar pledge shortly thereafter. Still remaining to be heard from is Microsoft, also a BPEL4WS co-author, pertaining to its stance on royalties related to the proposal. Bob Sutor, director of Web services strategy at Armonk, N.Y.-based IBM, said he could not speak for the positions of the two co-authors of BPEL4WS pertaining to royalties. 'As far as IBM is concerned, we will license BPEL4WS on a royalty-free basis,' Sutor said during a presentation at the CNet Networks 'Building a Web Services Foundation' conference... BEA released a statement that it would submit its technologies for BPEL4WS sans royalties if the other two vendors do as well. 'BEA has been on record for a long time now advocating that all standards be royalty-free and have committed that any standard we have control over will be offered royalty-free. However, BPEL4WS is a standard backed by three companies, so all three have to agree on the royalty-free position. BEA has long pushed for it to be royalty-free -- so if IBM and Microsoft also come on board agreeing with that position, then we will of course continue to advocate it be submitted as a royalty-free standard,' said San Jose, Calif.-based BEA. Sutor cautioned that observers should not become simplistic in regards to royalty-free proposals in general. IBM, for example, could have conditions such as requiring that other vendors provide their technology royalty-free if IBM does..." A related article appears in The Register. See "Business Process Execution Language for Web Services (BPEL4WS)."

[December 10, 2002] The Copyright Wars Come to XML Standards." XML 2002 Conference Opening Keynote, by Pam Samuelson (Professor at the University of California at Berkeley). Tuesday, December 10, 2002, 9:45 AM, Ballroom I & II. "The copyright wars have now come to the XML community in the form of standards under consideration concerning rights expression languages (REL) to support digital rights management (DRM) technologies. As Stanford Professor Larry Lessig so presciently observed, computer program code often performs governance functions. Writing code to permit one activity but not another, in essence, makes the permitted activity 'lawful' under the system and the other action 'unlawful.' DRM technologies implementing REL are illustrative of 'code as code.' Content owners and developers of DRM technologies like to think of DRM as facilitating the rights of copyright owners to control their content. What they typically ignore is that the law of copyright gives rights to users as well as to copyright owners. Rather than designing systems to enable negotiations about competing rights claims or to enable fair use rights, developers too often focus on one side of the 'rights' equation: the content owners' side... Perhaps languages that facilitate permissions content owners wish to grant should be called 'permission languages' instead of REL. It may be more challenging to develop a balanced REL than an imbalanced one, but fortunately several organizations have shown themselves willing and able to submit requirements to develop a true REL. If a language is to be fairly described as a general purpose rights expression language and is to be vetted by OASIS or a similar organization as a standard, it should be a true REL. Members of OASIS within the XML community will have an opportunity in coming months to consider whether to approve a standard for an XML REL. This talk will show the connection between the debate over the OASIS REL standards effort and the many policy concerns underlying in the wider copyright wars..."

[December 10, 2002] "Patent Policy One Year Later: The W3C Royalty-Free Patent Policy Proposal & Perspectives on IPR Policies Developing Open Standards." XML 2002 Conference Lunch Event (Baltimore). Tuesday, December 10, 2002, 12.45pm - 1.45pm, Room 314. Presenters: Pam Samuelson, Professor, UC Berkley, United States; Daniel Weitzner, Chair, World Wide Web Consortium Patent Policy Working Group, United States; Karl Best, Director of Technical Operations, OASIS, United States. "One year ago at XML 2001 W3C heard a strong message in support of the necessity of royalty-free patent policies for the success of Web standards. Today we'll hear about the proposed W3C Royalty-Free Patent Policy currently in Last Call. Danny Weitzner, Chair of the Working Group that developed the policy at W3C, will describe the key aspects of the proposal and why W3C is moving in this direction. Following this, Pam Samuelson, Professor Law at Boalt Hall and renown intellectual property expert, will provide a broader perspective on the role of IP policies on the development of open technical infrastructure. Finally, we'll heard about the debate going on at another standards consortium, OASIS, over whether their RAND patent policy meets the needs of their membership."

[December 02, 2002] "Patent Holders on the Ropes." By Paul Festa. In CNET News.com (December 02, 2002). "A sea change in the views on patented technologies is affecting a broad range of high-tech standards organizations, forcing caps, thresholds and outright bans on royalties. The news in recent weeks and months has not been good for patent-holding members of standards groups, as one industry consortium after another has put the brakes on licensing plans. 'They're on the ropes,' Carl Cargill, director of standards for Sun Microsystems, said of the patent holders. 'But if you're willing to play in what we're calling the Web-based e-environment, it's pretty damn cool.' In aggregate, the news during the past year has put patent holders on the defensive as they fight to have their technologies adopted throughout the industry as a standard, while preserving the right to charge for the use of those technologies. After 14 months of wrangling over a proposed exception to its royalty-free policy, the World Wide Web Consortium (W3C), the Web's most influential standards group, this month repudiated the use of royalty-encumbered technologies in its recommendations, which govern a wide array of key Web specifications including XML (Extensible Markup Language). Also this month, two W3C member companies that had been pressing their patent claims on a new version of the Simple Object Access Protocol (SOAP) decided to back down... Despite recent gains by patent opponents, patent holders still have the upper hand in hammering out licensing terms, even within the restrictions of standards consensus, Perens claimed. 'The royalty folks are winning,' Perens said. 'And the reason is there are just so many standards organizations and we've only scratched the surface.' Some view the current trend toward restricting patents in standards as a correction for past patent abuses. Before today's royalty-averse climate, high-tech companies would contribute to standards organizations, and only after a standard was hammered out would they disclose that their contribution had royalties attached... The IETF began re-examining its patent policy with an eye toward clarifying the rules on disclosure. And some view the W3C's refusal to accept royalties partly as a repudiation of the patent surprise syndrome... Bradner said the IETF had encountered few instances where royalty considerations had kept one of its standards from being adopted, and that comparatively few royalty-bound technologies had found their way into IETF standards in the first place. Since the IETF adopted its patent policy 'RFC 1310' in 1992, patent holders have staked only 175 claims out of more than 2,000 IETF drafts. Ultimately the patent battle pits a philosophical point of view--that patents and standards are incompatible -- against the bottom line of companies for which licensing is a significant source of revenue. 'It's a very, very hard fight because companies do not want to give up the right to charge anywhere,' Perens said. 'Our point is that industry standards are the wrong place to make money from your patents. Standards should be something that everyone can implement without a royalty'..."

[November 15, 2002] "W3C Promotes Royalty-Free Web Services Standards." By Paul Krill. In InfoWorld (November 14, 2002). "The World Wide Web Consortium (WC3), which is working on standardization of Web services technologies, on Thursday published a 'Last Call Working Draft' of its proposed Royalty-Free Patent Policy, which is intended to enable W3C technology recommendations to be implemented on a royalty-free basis. To achieve the goal of royalty-free specifications, the proposal stipulates that participants in development of W3C Recommendations must agree to license 'essential claims,' defined as patents that block interoperability, on a royalty-free basis, W3C said..." See details in the 2002-11-15 news item "W3C Patent Policy Working Group Issues Last Call Royalty-Free Patent Policy Working Draft."

[October 17, 2002] "IBM Says Its Grid Services Contributions Will Be Royalty-Free." By Paul Shread. From GridComputingPlanet.com (October 11, 2002). "The Open Grid Services Architecture vision for the convergence of Web services and Grid computing received a big boost today when IBM announced that its contributions to the core Grid Services Specification will be royalty-free. 'IBM is pleased to announce that any essential patent claims, held by IBM, that are necessary to implement the 'Grid Services Specification' document submitted to the Global Grid Forum, will be licensed on a royalty-free basis,' IBM Grid Computing General Manager Tom Hawk wrote in a letter to Charlie Catlett, chair of the standard-setting Global Grid Forum..." See earlier: "Sun Wants OGSA IP Issues Resolved," by William Fellows (Storage & Systems analyst, The451.com).

[October 09, 2002] "Progress in the VoiceXML Intellectual Property Licensing Debacle." By Jonathan Eisenzopf (The Ferrum Group). From VoiceXMLPlanet.com. October 2002. "In January of 2002 the World Wide Web Consortium released a rule that requires Web standards to be issued royalty free (RF). Some VoiceXML contributors hold intellectual property related to the VoiceXML standard. Some of those companies have already issued royalty free licenses, while others have agreed to reasonable and non-discriminatory (RAND) licensing terms... The fact that not all contributors have switched to a royalty free licensing model has been a thorn in the progress if the VoiceXML standard. I've voiced my concerns previously on this issue, specifically in SALT submission to W3C could impact the future of VoiceXML... Recently, IBM and Nokia changed their licensing terms from RAND to RF. At the VoiceXML Planet Conference & Expo on September 27 [2002], Ray Ozborne, Vice President of the IBM Pervasive Computing Division assured the audience at the end of his keynote speech that IBM would be releasing all intellectual property that related to the VoiceXML and XHTML+Voice specifications royalty free and encouraged the other participants to do the same... If VoiceXML is going to survive as a Web standard, then all contributors must license their IP royalty free, otherwise, the large investment that's been made will go down the drain. My hope is that the voice browser group at the W3C will either resolve these licensing issues in the next six months or jettison VoiceXML and replace it with SALT. Either way, I believe that it would be prudent for voice gateway vendors to be working on a SALT browser so that customers have the option down the road..."

[October 07, 2002] "Perspective: The Patent Threat to the Web." By Bruce Perens. In CNet News.com (October 07, 2002). "The penultimate step in a yearlong battle over patents on Internet standards came last week, when the World Wide Web Consortium Patent Policy Board voted to recommend a royalty-free policy. The World Wide Web Consortium (W3C) draft recommendation has not yet been published. After public comments are solicited, the draft will be presented to the organization's director, Tim Berners-Lee, and an advisory board representing all of the consortium members. Large patent-holding companies may present a dissenting minority report, but Berners-Lee and the board are likely to approve the royalty-free proposal. As one of the three representatives of open source and free software on the patent policy board, I welcome the new recommendation. Developers of the Apache Web server, the Linux kernel and GNU system, and other popular free software will continue to be able to implement W3C standards in competition with proprietary software. Had the decision gone for so-called 'RAND' patents -- licensed with 'reasonable and non-discriminatory terms,' but sometimes requiring royalty payments -- the effect would have been to create a tollbooth on the Internet, owned by the largest corporations, collecting a fee for the right to implement open standards. Open-source developers, who do not collect royalties -- and thus cannot afford to pay them -- would have been locked out entirely. Smaller companies that develop proprietary software would have been at a disadvantage, compared with the largest corporations, which cross-license their patent portfolios to each other and thus would not be burdened by royalty payments. A royalty-free policy doesn't assure that standards won't be covered by patents, because a patent may become known after a standard has been adopted -- especially a patent applied for in the United States, whose government is almost unique in allowing patent applications to remain secret for an extended period. Under the new policy, the W3C would probably withdraw a standard so affected, and re-engineer it to avoid the patent... A royalty-free policy also may scare the largest companies away from participation in standards working groups, for fear that they will lose lucrative licensing rights. Working groups that create new W3C standards will require their members to file a declaration granting royalty-free rights to anyone for 'essential claims' -- patent claims that would unavoidably be infringed while implementing a standard. This will prevent 'patent farming,' the practice among patent holders of deliberately embedding their patents in new standards as a revenue-generating strategy. However, the grant of royalty-free rights does not apply to any use of the patent other than to implement the standard. Thus, patent holders will still have lots of opportunities to sell licenses to developers who wish to practice their patents for any other purpose... The W3C's decision will resolve only a single battle in a much broader war. A similar royalty-free policy must now be enacted by the Internet Engineering Task Force (IETF) and many other organizations. Some standards bodies may decide to buck the trend and act as playgrounds for large patent holders. Those organizations will argue that by allowing patent royalties, they will always be able to choose the best algorithm for any job. It will then fall to the market to decide which organizations it will follow. This battle must also be taken to the various governments and treaty organizations that produce bad law permitting the patenting of software and business systems, and continue to do so..." See "Summary of 30 September - 1 October 2002 Patent Policy Working Group meeting."

[October 03, 2002] "Standards Patent Strife Spreads." By Paul Festa. In CNET News.com (October 03, 2002). "The desire to strip patented technologies from Internet standards appears to be contagious. Buoyed by signs of success within the World Wide Web Consortium (W3C), opponents of royalty-encumbered standards are pushing to change the policy within the Internet Engineering Task Force (IETF). With efforts to add an exception to the W3C's royalty-free policy at an apparent standstill, advocates see in a newly formed working group the opportunity to prevent the incorporation of patented technologies in IETF drafts. The push to spread the royalty-free religion to the IETF has cheered engineers and standards advocates who oppose the adoption of patented technologies. 'I'm hoping that the IETF follows the W3C's lead,' said Carl Cargill, director of standards for Sun Microsystems. 'You can't have a network with a lot of royalties. That has an enormously chilling effect on invention and use, because if you don't know how much you're going to be charged, you'll probably use something else.' The IETF formed its new intellectual property rights (IPR) working group following a contentious meeting in Yokohama, Japan, this summer in which participants questioned the IETF's current policy that neither restricts nor discourages the use of patented technology in standards. The meeting was called with the specific goal of clarifying certain aspects of the IETF's current policy, rather than changing it to reflect a royalty-free bias or restriction. But anti-patent speakers at the meeting were vocal in their support of the fundamental shift away from patented contributions... The effort to modify the W3C policy has withered in the heat of public protest, primarily by individual engineers and those representing smaller companies--whose patent portfolios cannot compete with the likes of Microsoft and IBM -- but also by large companies like Sun that object in principle to patents in standards. The IETF's current policy offers no particular guidance to working groups contemplating the implementation of patented technologies. Instead, it mandates that members disclose whether technologies they submit for inclusion in IETF drafts are 'encumbered' by patents. The new working group's primary task is to eliminate confusion over the disclosure requirement... 'There's a substantial part of the community that doesn't like patents at all and wants to avoid using them at all, to go back to the original standard,' said Steve Bellovin, a researcher at AT&T Labs Research in Florham Park, N.J., and co-chair of the IETF's IPR working group. 'If the WG determines that there should be a change, we'll recharter and try to broaden our membership -- this is an issue that affects the whole IETF, so we need very broad consensus'..."

[October 04, 2002] "AOLTW Enforces Patents With Liberty Single Sign-On." By Matt Berger. In InfoWorld (October 04, 2002). "The single sign-on authentication technology under development by the Liberty Alliance Project could be bound by intellectual property restraints, despite a pledge from project founders who have said the technology will be open and royalty-free. AOL Time Warner (AOLTW), one of the members of the 120-company consortium, has claimed with the release of version 1.0 of the Liberty Alliance specification that technology it contributed to the project is patented and may be subject to special licensing requirements. From the beginning, founding members of the project have vowed to deliver a completely open and royalty-free technology that would allow compatibility between single sign-on authentication systems from a variety of vendors and Web site operators. Sun Microsystems, which spearheaded the consortium, has been the most vocal advocate of this, arguing that a royalty-free specification is vital in order to provide an alternative to Microsoft's Passport authentication technology. 'Certainly Sun's position is that any of the critical infrastructure for the Web should be available on a royalty-free basis,' said Bill Smith, director of Liberty Alliance technology at Sun. 'It's why the Internet has got off the ground. If we start seeing tollbooths and barriers put up we're going to see an impediment to growth.' ... AOLTW spokesman Andrew Weinstein said that while the company has claimed rights to certain technology in the specification, users will have free access to the specification in the first release. AOLTW has yet to decide how it will license its technology in future versions of the specification... Sun's Smith said that it will give free access to the intellectual property Sun contributed to the project with only one condition: Any companies that charge royalty fees for their contributions will have to pay Sun for its intellectual property. That means, if AOLTW is the only company to charge royalties it will also be the only company that has to pay royalties to Sun. The patents that AOLTW has staked claims to were acquired from Netscape and are common Internet technologies, such as those used to enable e-commerce , so-called 'cookies' and the security technology SSL (secure sockets layer), according to patent descriptions on file with the U.S. Patent and Trademark Office. Because these patents are so widely used on the Internet, few expect AOLTW to charge royalty fees to companies that implement the Liberty specification, said Michael Barrett, president of the Liberty Alliance board, and vice president for Internet strategy at American Express. 'If they choose to license (their patents) they could hold half the Internet for ransom,' he said..." See: "Liberty Alliance Specifications for Federated Network Identification and Authorization."

[October 02, 2002] "Do Web Standards and Patents Mix?" By David Clark. In IEEE Computer Volume 35, Number 10 (October 2002), pages 19-22. "... a debate has erupted between those who say the Internet should be built of freely available, standardized technology components and those who argue that useful technology development should be fairly compensated via royalties or licensing fees. Some observers, such as Tim O'Reilly, founder of O'Reilly & Associates, a technology publisher, say this controversy threatens the Internet's future. They say that patent-based standards requiring royalty payments will slow or discourage adoption of new technologies, except by richer companies, thereby inhibiting development of the Web. They also say that these standards give patent holders too much power over technologies and how they are used. Other observers contend it was inevitable that as the Web evolved into a potential way to generate revenue, companies would want to retain and sell new technologies they develop, rather than releasing them for general use. Moreover, they say, the ability to patent and profit from their work provides an incentive for companies to continue developing new technologies. Recent issues have demonstrated just how controversial the use of patented technologies in computerindustry standards can be. For more information, see the four case study sidebars. [W3C Patent Policy Framework, Web Services, MPEG-4, JPEG] ... According to Professor Mark Lemley of the University of California, Berkeley's Boalt Hall School of Law, standards organizations often require participants to sign an agreement to license, either on royalty-free or reasonable and nondiscriminatory (RAND) terms. However, he noted, 'It is not clear what [RAND] obligations mean in practice.' Meanwhile, most organizations discourage companies from discussing the specifics of their patents or possible licensing terms during the standards development process, to accelerate the proceedings and avoid the appearance of collaboration among working group members. Lemley noted that not discussing licensing details in advance can lead to problems if an organization adopts a patent-based standard but then disagrees with the patent holder over what constitutes reasonable terms. This issue is important because the terms of a standards organization's RAND requirements don't generally specify what 'reasonable and nondiscriminatory' fees are. This can lead to disputes between the organizations and patent holders, explained W3C staff member Philippe Le Hégaret... Some say patents have no place in such a rapidly changing field. Because of the financial burden and usage limitations they create, said JPEG member Richard Clark, CEO of the Elysium Ltd. Web consultancy, 'patents are a direct threat to smaller businesses, individual entrepreneurs, and, in particular, the [opensource] software movement.' Also, he explained, an information-technology patent generally lasts longer than the technology itself, thereby seriously limiting marketplace participation and competition. Other opponents say that patents will halt the kind of free and rapid development needed for tomorrow's Internet. Patents can be exclusionary and thereby restrict the cooperation necessary to evolve core Internet technologies, said Giga's Telleen. Companies have plenty of opportunity to make money without restricting basic Internet-infrastructure innovation and development, he explained. However, MPEG LA's Horn and others say licensing fees can be fair, reasonable, and acceptable, and that the current system for using patented technology in standards will correct itself. 'The market will eventually create the balancing points where reasonable sellers are willing to make patented technology available in open markets to reasonable buyers who are willing to pay a price that they can absorb in their product development,' he explained..."

[September 25, 2002] "At the Center of The Patent Storm." By Paul Festa and Daniel J. Weitzner (Director, W3C Technology and Society Activity). In CNET News.com (September 25, 2002). ['If you want to adhere to the latest official protocol for building a Web application, it could cost you. Welcome to the latest controversy roiling the World Wide Web Consortium, the standards body responsible for shepherding Web technologies like XML and HTML. This particular controversy began brewing nearly a year ago when the W3C first contemplated a change that would let its working groups incorporate technologies that already had intellectual property claims -- and royalties--attached to them. The W3C subsequently backed away from that stance in the face of strong opposition and reaffirmed its policy of only recommending royalty-free technologies. But the issue is far from over... Weitzner spoke to CNET News.com about the fate of the W3C's royalty-free policy and potential royalty exception, and about the role of the Semantic Web.'] Excerpts: "What's the core motivation, then, for promoting a royalty-free policy? [Weitzner:] "The critical concern that has led us to push so hard for a royalty-free policy is that for all the different Web software implementers it would be terribly hard to negotiate with the parent holders. They don't have their own patent portfolios or intellectual property lawyers. How are they going to do it? That doesn't mean they can go and steal the IP, but we want to prevent putting them into a situation where they have to negotiate on such a lopsided playing field. We want to create standards that can be implemented without infringing on patents. In some cases, patent holders will still see it in their advantage to disseminate their technology for free... The goal is to avoid these very difficult, time-consuming licensing negotiations that require that implementers have lawyers and patent portfolios that they can trade with. We think there are very important pieces of the Web that can be developed by people who don't have those resources." ... Like the open-source groups? [Weitzner:] "The open-source community has played a really important role at the W3C because, clearly, royalty-bearing standards create a fundamental problem for open-source software. But the need for royalty-free standards would exist even if there were no open-source solutions. What has been so successful about the Web is that its technology can be implemented everywhere by large and small developers, who don't have to worry about these licensing negotiations. The need for royalty-free standards goes beyond just the needs of the open-source community..."

[September 18, 2002] "Forever Free Services?" By P.J. Connolly and Tom Yager. In InfoWorld Issue 37 (September 13, 2002), page 42. Test Center Research Report, Web Services Applications. "Web Services, so the story goes, typify the best aspects of modern business software. Their foundation technologies, including XML, SOAP, and WSDL, were hewn by the sharpest minds in the IT industry and made free for the benefit of all. But as vendors turn Web services into products, skeptics fear that the technology's openness may be bait. Standards could be subverted into springboards for patents, proprietary adaptations may hamper interoperability, and open-source implementations could be subjected to licenses." See the dialog between Tom and P.J. [Tom] "Enterprise computing founders such as Digital Equipment, Intel, and IBM spent fortunes on R&D to create what everyone now takes for granted. They recovered those costs through fees and licenses, the application of which did not slow the acceptance of what they created. You simply can't expect commercial-grade technology to develop without a price tag attached... Web services, like the Web itself, are gaining traction because they're built from brilliant ideas that make it easier to do business. The minds that hatch such ideas don't come cheap. If the ubergeeks' employers can't profit from their inventions, what will motivate vendors to fund the research that evolves into standards? Unless you propose to move all of these brainy people to a bread-and-water commune, IT will have to pay for those deep thoughts... It's natural for vendors to explore all possible ways to extract revenue from their inventions. Patents and licenses generate income that companies would be foolish to disregard. When vendors act reasonably in that pursuit, as major Web services players have so far, the market rewards them..." [P.J.] "There's nothing wrong with making money from the sweat of your brow. I simply object to seeing the standards process abused by vendors trying to lock users into proprietary solutions. Besides, you're forgetting how much of the foundation work for the Internet was done in the nonprofit sector. Large chunks of Sun's Solaris, in particular, and a lot of other TCP/IP implementations, including Microsoft's, still bear the copyright of the Regents of the University of California for a reason... It's smart for vendors to put their efforts behind developing standards for Web services. Also, it's a good idea for standards bodies to resist the temptation to adopt proposals that could become the subject of future holdups through transfers of patent ownership. Forgent's claim to own the rights to the JPEG specification is just the kind of problem that IT doesn't need to relive every few years. If a vendor wishes to have a patented technology adopted as a standard, it must be prepared to assign its rights to the standards body for the lifetime of the patent... Here's the tough part: Exactly what is the difference between reasonable returns and shameless greed? Sure, we all know it when we see it, but sometimes, market discipline doesn't kick in until it's too late..."

[September 16, 2002] "IBM Pressures Sun to Free Java." By David Berlind. In ZDNet Tech Update (September 11, 2002). ['IBM director of e-business standards strategy Bob Sutor is one of a handful of people at Big Blue who have a say in the company's policies regarding standards, open source, and Web services. One Web services technology that he wants to see open-sourced, and subsequently turned into a standard, is Sun's Java.'] "Java is many things to many people. Summed up in one sentence, it's a series of more than 190 specifications called Java Specification Requests (JSRs) that cover Java's implementation in everything from virtual machine-based application servers for enterprises (J2EE) to the desktop virtual machine (J2SE) to the commonly deployed CGI-like routines (servlets) used to interface those virtual machines with outside applications such as a Web server. The fate of those JSRs lies with the working groups that make up the Java Community Process (JCP), an organization of hundreds of vendors. Although run by Sun, the JCP follows a largely democratic process; vendors involved in each of the JSRs (and the vendor list varies from one JSR to the next) have a lot of freedom to take those JSRs in whatever direction they see fit. For example, Sun leaves most development decisions for the many mobile Java specifications to companies like Nokia, Ericsson, and Motorola, who are in the best position to determine what Java in a cell phone needs to look like. But despite the JCP's democratic look-and-feel, Sun, which owns the patents to Java, still retains veto power. Also, Sun's intellectual property stake in the technology allows the company to connect other requirements to Java and to those who want to profit from it. [Says Sutor:] 'We just think the whole way that Java is standardized can be done better. So, we're willing to use Sun's words to get this to happen'... Sutor is referring to Sun's positioning itself as a company devoted to competing on the implementation of royalty-free standards... While Sun is certainly entitled to protect its intellectual property in the same way that Intel, Microsoft, and IBM do, Sutor wants Sun to look at Java the same way that Sun wants IBM and other vendors to look at Web services specifications like WS-Security... Is Sun going to open up Java? Certainly, Sun is moving in that direction. According to [Sun's] Gingell, Sun realized that it had to figure out a way to let open source organizations like the Apache Software Foundation license Java. Along those lines, Gingell says Sun intends to open-source Java, but that it's not a simple process because Sun doesn't own all the intellectual property in all the JSRs. For the same reasons it can't open source all of Solaris, Sun apparently can't legally open source all of Java either. The company is working on clearing the legal hurdles cleared... I found some common ground between Sutor and Gingell. Both men agree that intellectual property lawyers at their respective companies have their own understanding of how to protect a company's bottom line. The challenge for Sutor and Gingell is selling others in their respective companies on the notion that growth stimulated by open standards and open source could have an equal if not greater impact on a company's bottom line..."

[September 10, 2002] "Open Source Software Use Within UK Government." By UK Office of the Envoy. [UK] Open Source Software Policy Version 1. Date: 15/7/02. 8 pages. "Open Source Software (OSS) is software whose source code is openly published, is often developed by voluntary efforts and is usually available at no charge under a licence defined by the Open Source Initiative which prevents it from being redistributed under a more restrictive licence. The UK's response [...] has been through mandating open standards and specifications in its e-Government Interoperability Framework (e-GIF) and allowing market driven products to support these. It is now considered necessary to have a more explicit policy on the use of OSS within UK Government and this document details that policy. It does however need to be read in conjunction with current advice and guidance on procurement matters from OGC. UK Government in this context includes central government departments and their agencies, local government, the devolved administrations as voluntary partners, and the wider public sector, e.g., non-departmental public bodies (NDPBs) and the National Health Service... The key decisions of this policy are as follows: (1) UK Government will consider OSS solutions alongside proprietary ones in IT procurements. Contracts will be awarded on a value for money basis. (2) UK Government will only use products for interoperability that support open standards and specifications in all future IT developments. (3) UK Government will seek to avoid lock-in to proprietary IT products and services. (4) UK Government will consider obtaining full rights to bespoke software code or customisations of COTS (Commercial Off The Shelf) software it procures wherever this achieves best value for money. (5) UK Government will explore further the possibilities of using OSS as the default exploitation route for Government funded R&D software..." Cf. Sincere Choice from Bruce Perens, "MS 'Software Choice' scheme a clever fraud": "Microsoft's new 'Software Choice' campaign is all for your right to choose... as long as you choose Microsoft. It's too bad that Intel and the U.S. Government couldn't see through the rhetoric. Microsoft has responded with a clever Software Choice campaign that, read quickly, appears to fight discrimination and call for choice, while actually promoting policies that would lock out Free Software. For example, it promotes the embedding of royalty-bearing software patents into "open" standards. Of course Free Software producers don't charge copyright royalty fees, and thus can't afford to pay for patent royalties, so they would not be able to implement any standard that contains royalty-bearing patents..." [UK PDF link/doc broken; see Word .DOC format]

[August 2002] "Inventions, Industry Standards, and Intellectual Property." By Mark R. Patterson. In Berkeley Technology Law Journal Issue 17:3 (Summer 2002). 42 pages with 141 notes. See especially documentation at Note 40: RAND is poorly defined. "The approach presented in this essay provides a means of efficiently and fairly determining what licensing revenue is due a patentee when an industry standard incorporates its patent. The proposed approach puts an emphasis on distinguishing between demand for the invention and demand for the standard, and it would allocate to the patentee only those revenues derived from its own innovative contribution. In some cases there may be evidence available to determine what portion of the demand for a standardized product is due to that contribution. In other cases, there may be no such direct evidence, but it may still be possible to use indirect evidence to draw inferences regarding the contributions of the patentee. Although in some instances this analysis will be inconclusive, even in those instances it clarifies the issues to be resolved. Furthermore, by giving standard-setting organizations the power to negotiate on behalf of their members, the equilibrium in the patent system is restored."

[August 22, 2002] "IEEE Intellectual Property Committee on Copy Control Systems." Draft Position Paper. Submitted to the the Requirements Subcommittee, OASIS RLTC, on behalf of IEEE by Mike Godwin. 2002-08-22. A "near-final draft of the IEEE Intellectual Property Committee's position statement on Copy Control Systems, also known as systems implementing Digital Rights Management." - "... since a major function of a rights language is -- as suggested by the nomenclature 'rights language' or 'rights management' -- to express both the rights held by the content owner and those held by the content user, it is important that the language adhere to the legal framework of what rights can be granted and held, and that it reflect current public policy concerning copyright... While recognizing the legitimate desire of copyright owners, including the content industry, to protect their copyright rights in the face of technological progression, IEEE-USA is concerned that copy control systems will likely upset the copyright balance between copyright owners, users, and consumers, and cause other problems with respect to technical innovation in the U.S . We are particularly concerned about the effects of any copy control technology that might be mandated by the government, or that might be imposed by industry without taking adequate care to protect the rights of the users and consumers... Any mandated copy protection system and its specifications must be available to those implementing the system without the payment of a royalty and must not impose unreasonable burdens..." [see full text for context and for other requirements]

[August 15, 2002] "Standard Practice." By Aaron Walsh. In New Architect Magazine Volume 7, Issue 09 (September 2002), pages 26-30. ['Backing the wrong standard can mean costly licensing fees. Learn to compete effectively using standards, while avoiding pitfalls along the way.'] "As the host of available standards continues to grow and change rapidly, it becomes increasingly difficult to choose among them. Which standards should we adopt today? Which should we let bake a little longer in hopes of using them tomorrow? And which should we ignore altogether? When building products and services for the Internet or Web, we're forced early in the process to make critical, long-term bets regarding which technologies we'll use. We're asked to choose among various solutions, both proprietary and standardized. And as any software architect can attest, the technology choices you make today can make or break you tomorrow. In addition to the usual technology-specific issues, we must also consider the short- and long-term legal and business impacts of our choices. License fees related to patents and other intellectual property rights (IPR) are often accompanied by both proprietary and standard technologies. Sometimes these fees are obvious; other times they present hidden dangers. These issues are only the beginning when it comes to adopting any new technology solution. Although it's important to perform advanced due diligence and take an eyes-wide-open approach when assessing various options, even these steps don't guarantee a smooth ride -- as MPEG-4 product vendors can attest... Irrespective of any particular standards organization's stance on the issue of IPR in general, the debate often boils down to the fundamental issue of whether patents are good or bad for standards. The question of whether patents protect and advance standards or merely encumber and stall them isn't likely to be resolved soon, if ever. On one hand, patents and their associated license fees can be viewed as effective barriers to entry that can extend a significant competitive advantage to those willing to pay for the privilege of using them. This complements the notion that the very best technologies are usually patented and don't come for free. On the other hand, some view patents as a barrier to widespread technology adoption because they encourage for-fee licenses. Many vendors (and especially independent developers) are unwilling -- or unable -- to accept such licenses, no matter how 'reasonable' the terms may be. In some cases, patented technologies can exert a measure of control over licensees above and beyond mere license fees..."

[August 15, 2002] "Supporting Limits on Copyright Exclusivity in a Rights Expression Language Standard. A Requirements Submission to the OASIS Rights Language TC." By Deirdre K. Mulligan and Aaron Burstein, with John Erickson (Principal Scientist, Digital Media Systems Lab, Hewlett-Packard Laboratories). August 13, 2002. 17 pages. Comments submitted by the Samuelson Law, Technology & Public Policy Clinic on behalf of the Clinic and the Electronic Privacy Information Center (EPIC). "Copyright law grants certain rights to purchasers and other users of copyrighted works. It is neither a legal nor a practical requirement for users to declare (or claim) these rights explicitly in order to enjoy them. While the public's legal rights cannot be altered by Digital Rights Management (DRM) systems per se, we can imagine scenarios in which DRM systems may require users to make these kinds of declarations, in order to work around inherent technical limitations. It is therefore essential that a rights expression language (REL) provide the vocabulary necessary for individuals to express, in a straightforward way, the rights that copyright law grants them to use materials. The user's claim of right would provide the essential information for a usage-rights issuing agency to give the user the technical capability to use the work in a particular way... In many instances it is important that both parties in the relationship be able to assert their rights and/or desired terms. True negotiation between parties requires that, at a minimum, the REL provide the vocabulary and syntax to support bi-directional exchanges. Otherwise, the rights transaction reduces to the mere request for and acceptance of an offer of permissions asserted by the rights holder. This document therefore suggests certain accommodations that DRM architectures, and especially their rights expression language components, must make to adequately express certain core principles of copyright law. Rights holders must have the means to express that a work is available on terms that reflect existing copyright law, as opposed to the limitations of a simple contract. The REL must also enable rights holders to express the more generous terms -- i.e., copyleft, with attribution -- commonly attached to digital resources today. At a minimum, recipients of works must have the ability to assert their rights as recognized under copyright law, and have these assertions reflected in their ability to use the work. Extending an REL to support a broader range of statements that reflect current law is, however; insufficient. The rights messaging protocol (RMP) layer must also be extended to accommodate both the downstream and upstream assertion of rights. We recognize that the RMP layer is not currently within the scope of this discussion, but we believe that the assumption of a one-way expression of rights has in part led to the current deficiencies in the REL..." Available also in original Word/.DOC format. See also the collection of Requirements contributions to the OASIS RLTC, Requirements Subcommittee.

[August 06, 2002] "Stealth Patents Put Innovation at Risk." By Jim Rapoza. In eWEEK (August 05, 2002). "At the recent Open Source Group Conference, Tim Berners-Lee, the creator of the World Wide Web, spoke out on the need to keep Web standards and Web services patent-free. He knows what he's talking about -- not only do patents threaten the standards put forth by his World Wide Web Consortium, they have even threatened his very invention of the Web, one that has been compared to Gutenberg's creation of the printing press. Just a couple of years ago, British Telecom stunned the world by claiming to have a patent on hyperlinking. Despite the fact that everyone knew that there was prior art discussing hyperlinking before the date of the patent, the sheer threat of it caused a lot of consternation and worry. And just recently, Forgent Networks claimed to have a patent on the technology for the JPEG format, one of the most commonly used image formats on the Web today... I understand that companies losing money big time in today's economy are increasingly looking for pieces of paper in their closets that they can use to increase the value of their stock and to potentially blackmail other tech companies. But there has to be a limit here..." See JPEG above.

[August 05, 2002] "IANAL [I Am Not A Lawyer], but HTH [Hope This Helps]." By Eduardo Gutentag (Sun Microsystems). Presented at the Extreme Markup Languages Conference 2002. Wednesday, August 7, 2002. "Issues relating to IPR (Intellectual Property Rights) have burst into public consciousness over the past 12 months or so, and have attracted considerable attention both among developers and among the specialized press. As always happens in these cases, misinformation competes with information with equal fierceness. In order to reduce the amount of current misinformation, this talk will: (1) examine the usual alphabet soup (IPR, RAND, RF, RAND-Z); (2) compare the various available alternatives; comment on the known status of this matter in a variety of SDOs (W3C, OASIS, IETF, GIS, etc.); (3) illuminate some particular cases of extreme interest (Unisys, Rambus, etc.) and try to penetrate the fog that is brought upon this subject, sometimes through ignorance, sometimes through FUD..."

[July 22, 2002] "Keeping Web Services Royalty-Free." By Anne Chen. In eWEEK (July 22, 2002). "Tim Berners-Lee, director of the World Wide Web Consortium, opened The Open Group Conference ['Boundaryless Information Flow: The Role of Web Services'] on Monday by asking his colleagues to preserve the universality and openness of the Web as they build Web services as the foundation for the future of the Internet. And, said Berners-Lee, a key to preserving openness on the Web is to keep standard Web protocols patent and royalty-free. 'Remember that the ways to use Web services will not only be wide, but will be the base for all kinds of things people will build for the Web in the future,' Berners-Lee said. 'We have to be generic in design because Web services, if done well, will be flexible and apply to everything from mainframes to cell phones.' [...] Berners-Lee said maintaining an open, royalty-free approach will be important for both Web services and semantic Web standards. (Web services standards like SOAP and UDDI focus on how online services are found and how they interact, while semantic Web standards include industry-specific markup languages that help define the nature and behavior of objects online.) Although the two sets of standards are currently being pursued in separate, parallel tracks, Berners-Lee predicted that the semantic Web will become increasingly important as Web services mature. As such, the future of the Internet, he said, will revolve around Web services, voice routing, and the semantic Web. Berners-Lee said that, in order for all or any of those capabilities to see market growth, the base standards need to be patent- free. How that will happen is an issue the W3C has been grappling with over the past year... 'The W3C is working on a process so people used to using patents to protect themselves can sit around a table and come to an agreement where no one will charge royalties regardless of whether they have a patent...' For the conference The Open Group partnered with organizations including the W3C, OASIS (Organization for the Advancement of Structured Information Standards), OMG (Open Management Group), OGC (Open GIS Consortium), OAG (Open Applications Group) and DMTF (Distributed Management Task Force) to address the future and the development of Web services and associated standards."

[July 17, 2002] "Federated Digital Rights Management: A Proposed DRM Solution for Research and Education." By Mairéad Martin, Grace Agnew, David L. Kuhlman, John H. McNair, William A. Rhodes, and Ron Tipton. In D-Lib Magazine Volume 8 Number 7/8 (July/August 2002). ISSN: 1082-9873. "This article describes efforts underway within the research networking and library communities to develop a digital rights management (DRM) solution to support teaching and research. Our specific focus is to present a reference architecture for a federated DRM implementation that leverages existing and emerging middleware infrastructure. The goals of the Federated Digital Rights Management (FDRM) project are to support local and inter-institutional sharing of resources in a discretionary, secure and private manner, while endeavoring to maintain a balance between the rights of the end-user and those of the owner. 'Federated' in our project title refers to the shared administration of access controls between the origin site and the resource provider: the origin site is responsible for providing attributes about the user to the resource provider. FDRM applies and extends the federated access control mechanisms of Shibboleth, a project of the Internet2 Middleware Initiative to develop 'architectures, policy structures, practical technologies, and an open source implementation to support inter-institutional sharing of web resources subject to access controls.' [...] Many in R&E [Research and Education] consider that commercial DRM solutions tip the balance between the rights owner and the user too much in favor of the rights owner, undermining fair use and the first sale doctrine in the process -- two critical and cherished principles in R&E [BOAI - Budapest Open Access Initiative] .. R&E requirements reveal a distinction between conventional definitions of DRM (the e-commercial model, which functions solely to protect the rights of the owner) and the broader definition emerging in the R&E community. The latter includes access management as well as intellectual property rights management, and is as concerned with the rights of the user as with those of the rights owner. Indeed, given this difference in interpretation, it has been suggested that the term 'DRM' has been appropriated by the publishing industry and that the goals of the R&E community in this space would be better served using a different term [Lolly Gasaway, 'Looking Ahead: The Future of Digital Copyright and Its Impact on Higher Education']. The second point is that, whether fair use is interpreted as a declarative right or a defense, methods have been proposed to accommodate fair use either in trusted systems [Mark Stefik, The Internet Edge: Social, Technical, and Legal Challenges for a Networked World] or by means of third-party escrow [Dan L Burke and Julie E. Cohen, 'Fair Use Infrastructure for Rights Management Systems']. The notion, therefore, that an accommodation of fair use is beyond the province of DRM technologies is being challenged..."

[July 11, 2002] "Standards Stalled Over Royalty Disputes." By Paul Festa and Stephen Shankland. In ZDNN (July 11, 2002). ['A key Web standards body is bracing for a vote next week that could decide once and for all how it will handle patented technology that comes with royalties attached.'] "Pro- and anti-royalty factions have debated the issue since last fall, in a high-stakes dispute that could determine what technologies may be considered for common use at the most fundamental levels of Web design. That in turn will have strategic fallout for high-tech giants struggling for dominance in creating ambitious new technologies such as interactive services -- a battle in which Microsoft and IBM stand virtually alone with the clout to push proprietary applications on everyone else. Longtime Microsoft foe Sun Microsystems, for one, is trying to ensure that next-generation 'Web services' Internet standards are royalty-free, exerting pressure on IBM, Microsoft and others to follow suit. Next week's decision could mark a major shift in this and other standards battles if patented technology is rejected by the World Wide Web Consortium (W3C). If a final effort to craft a royalty exception is not hammered out by next week, it could die altogether, negotiators close to the talks say... The W3C found itself in a heated controversy last fall after members proposed charging royalties for patented technologies that found their way into W3C recommendations. This spring, the W3C retreated from the proposal, pledging to keep its recommendations royalty-free. Despite that pledge, the W3C is still trying to decide what to do with patented technologies that owners are unwilling to contribute with no strings attached. As a result, the W3C's Patent Policy Working Group is trying to hammer out an exception to the royalty-free policy. That has patent and royalty critics up in arms, helping mire a committee searching for consensus in an impasse earlier this month. On a teleconference July 1, 2002 members discussed a proposal from three unnamed members to establish an exception to the royalty-free policy for a so-called RAND (reasonable and nondiscriminatory) license. Under the proposal, the W3C would split its recommendation, with the 'core' of a specification produced by the W3C without royalties, and patented 'extensions' with royalties worked out either by the W3C or other groups. The proposal did not win sufficient support to advance, and the head of the working group warned that public opinion was siding against anything like it... By dropping a royalty-free exception, the W3C would have to leave out technologies with royalties attached, unless the patent holders agreed to waive them. That could put major intellectual property holders such as Microsoft and IBM in a tough spot: Either give away their technology or remove it from consideration as a standard... Sun has also emerged as a major proponent of unpaid standards, convening a royalty-free standards group called the Liberty Alliance Project to develop online authentication services. In addition, the company held out for royalty-free provisions before joining a high-profile Web security group last month. 'We do not believe in taxing people for use of those standards,' Jonathan Schwartz, Sun's software chief, said last month..." [Note Daniel Weitzner's clarification on the PPWG's proposed timeframe and the Summary of 8-July-2002 W3C Patent Policy Working Group Teleconference.]

[July 11, 2002] "Microsoft Claim Shakes Graphics World." By Matthew Broersma. In ZDNet News (July 11, 2002). "OpenGL, a widely used cross-platform graphics standard, may be subject to more restrictive licensing following recent claims by Microsoft that it owns patents to technology critical to the specification. While it is as yet unclear how Microsoft intends to pursue its claims, the matter underscores the increasing difficulty of creating high-tech industry standards of all kinds, particularly those that are intended to be widely available and royalty-free. The issue is particularly relevant in Europe, which is debating whether to make software more broadly patentable, as is the case in the United States. Microsoft's intellectual property (IP) claims first emerged back in March, when the company said that it had 'possible claims' on a technology called vertex programming, which gives developers more control over 3D effects such as lighting. The claims caused some consternation within the OpenGL Architectural Review Board (ARB), which governs the specification... OpenGL appeared in the early 1990s as an evolution of Silicon Graphics' (SGI) IRIX GL standard. It is now used across platforms such as Unix, Linux, Mac OS and Windows for technical 2D and 3D modeling, as well as for games such as Doom and Quake. The language is evolving as new capabilities are built into graphics acceleration cards, and graphics hardware makers such as Nvidia and ATI are voting members of the ARB... OpenGL owes its current success to an unrestrictive licensing system, which allows developers to write to the API without a license. It also carries no royalty fees. This benefits the makers of graphics hardware, who would otherwise be stuck either paying royalties to patent holders or supporting a number of different proprietary standards. But the system only works if companies that hold relevant intellectual property agree not to press their claims, in return for the benefits of a free, unified standard..."

[July 05, 2002] "Out of Order. [Ahead of the Curve.]" By Steve Gillmor. In InfoWorld (July 05, 2002). [This story about WS-I includes comments from Simon Phipps on patents and royalties.] "... Sun would have to join the [WS-I] organization as a member in order to be considered for a board seat. 'What we're being offered is the opportunity to join a lottery -- to join a beauty parade for a temporary place on a second-tier position on the board,' says Simon Phipps, Sun's chief technology evangelist. 'We're not interested. We want to be a founding member so that we can fix the bug in WS-I, which has been built in by its founders about preserving the royalty control of future standards on the Internet.' Sun's position, Phipps says, is that the infrastructure of the Internet should be royalty free. 'There's been a market that has been successfully manipulated by two monopolists,' Phipps challenges, and 'new infrastructure is being proposed which is under threat through control of patents.'... As for term limits, Phipps is not surprised at the tactic. 'It doesn't matter what Rube Goldberg mechanisms they come up with to make it look as if they're inviting us while still actively rejecting us.' Phipps also rejects the time frame: 'It could take us longer than two years to sort out the royalty-payable approach that WS-I is taking'...""

[June 24, 2002] "Patently Absurd." By Gary L. Reback. In Forbes ASAP (June 24, 2002). ['Patents are no longer invention stimulants, but have become widely abused revenue-generating vehicles. The U.S. Patent and Trademark Office (USPTO) has aided those who abuse the system by allowing anyone to get a patent for almost anything.'] "Too many patents are just as bad for society as too few. There are those who view the patent system as the seedbed of capitalism -- the place where ideas and new technologies are nurtured. This is a romantic myth. In reality, patents are enormously powerful competitive weapons that are proliferating dangerously, and the U.S. Patent and Trademark Office (USPTO) has all the trappings of a revenue-driven, institutionalized arms merchant. My own introduction to the realities of the patent system came in the 1980s, when my client, Sun Microsystems -- then a small company -- was accused by IBM of patent infringement. Threatening a massive lawsuit, IBM demanded a meeting to present its claims. Fourteen IBM lawyers and their assistants, all clad in the requisite dark blue suits, crowded into the largest conference room Sun had... In corporate America, this type of shakedown is repeated weekly. The patent as stimulant to invention has long since given way to the patent as blunt instrument for establishing an innovation stranglehold. Sometimes the antagonist is a large corporation, short on revenue-generating products but long on royalty-generating patents. On other occasions, an opportunistic 'entrepreneur' who only produces patent applications uses the system's overly broad and undisciplined patent grant to shake down a potential competitor...' Note: While IBM's name appears here as 'threatening a massive lawsuit,' I understand that any number or large companies could be named in this slot: Reback's argument is not against any one company, but against all companies that (ab)use the US patent system in this way. See also in Forbes: (1) "The Smother of Invention" and (2) "Search 500,000 Documents, Review 160,000 Pages in 20 Hours, and Then Do It All Over Again. The detailed life of a patent examiner."

[May 16, 2002] "Company Claims Patent on 'millions' of E-Commerce Sites." By Sam Costello. In InfoWorld (May 15, 2002). [Paranoia gives way to cash settlements.] "... At issue are two PanIP patents, awarded to Lawrence B. Lockwood, one of the principals of Pangea, in 1996 and 2001. The 1996 patent, number 5,576,951, covers a system 'for composing individualized sales presentations created from various textual and graphical information data sources' using 'the retrieval of interrelated textual and graphical information,' according to the patent filing. The 2001 patent, number 6,289,319, which covers an automated 'financial transaction processing system' in which a computer 'is programmed to acquire credit rating data relating to the applicant from the credit rating service,' according to the filing. Though PanIP is currently only suing 11 companies for allegedly infringing on these patents, the total number of infringing companies could run into the millions, according to Kathleen M. Walker, a private practice attorney based in San Diego who is representing PanIP... PanIP is seeking a one-time $30,000 from each company for a license on both patents for as long as they are valid, she said. That payment would also cover a patent that PanIP claims to have pending that covers 'very similar technology and may bear on these retailers,' Walker added. So far, one of the 11 companies being sued has chosen to settle, Walker said. She declined to release terms of the settlement because that agreement has not been finalized... Though the decision to file suit against 11 small businesses out of the potentially millions of companies that may be infringing the patents, including such e-commerce titans as Amazon.com and eBay, may look bad, 'the patent and trademark laws don't say you have to go after the biggest fish first,' Walker said... These lawsuits aren't the first time that PanIP principal Lawrence Lockwood has initiated legal proceedings against companies he felt were infringing his patents. Lockwood filed a lawsuit against American Airlines in 1994, claiming that American's SABREvision airline reservation system infringed on other patents he holds. Lockwood lost the suit in the U.S. District Court for the Southern District of California and then lost again on appeal in 1997... Though the patents may seem broad, 'when you seek a patent, you try to get it as broad as possible,' said PanIP's attorney Walker..."

[May 10, 2002] "The Wireless, Non-Free, Paperless Future. [Future of News.]" By Leslie Gornstein. In Online Journalism Review Article posted: 2002-04-18; modified: 2002-05-02. ['Technologies in research labs today will soon change how we get our news. The market downturn has meant bad news for R&D budgets. But most firms say they are still busy developing the next generation of gadgets that will redefine how the news is delivered and received. Rest assured, you won't get it for free.'] "... Here are just a few of the ways gizmos in the pipeline now may change the news experience in the near future: [1] Nothing Will Be Free. The biggest change is that the information you get over your laptop, Palm or pen probably won't be free. And if it is free to peek at, you probably won't be able to copy and paste it, print it, look at it a second time, or store it on your hard drive in any way -- unless you pay for the privilege. A relatively new markup language called XrML is being tweaked by Xerox, Microsoft and others to protect copyrighted materials in the digital domain. At Xerox, researchers are developing a digital rights manager software suite that will let people use XrML to protect everything from songs to written stories. A song being offered for free download at a mall kiosk may go into a 13-year-old's MP3 player, but once the kid gets home, he may find he can't put it on the Net or even upload it to his PC without a message popping up on his computer monitor, asking if he would like to purchase the privilege. The language is being hailed by at least one standards board as the way to shut down piracy and free rides in general. 'DRM (digital rights management) isn't just hacker proofing,' says Michael Miron, chief executive at ContentGuard, a Xerox spin-off that's spearheading XrML rights software in cooperation with Microsoft. 'You need security, but you also need to deal with conditions of use.' What's scary about DRM is that there's nothing built into the forthcoming rights protection software that protects consumers' rights under fair use laws -- the same laws that allow people to tape their favorite TV shows. But Miron says assuring such rights is too much of a burden for his software team, arguing that every country has different intellectual property laws. The rights management revolution is already underway; a Microsoft eBook reader that complies with XrML rights management standards was released last summer. More XrML products are on their way later this year, Miron says..." See analysis of ContentGuard's (XrML) patent claims above.

[May 10, 2002] "Toward a New Politics of Intellectual Property." By Pamela Samuelson (University of California at Berkeley). Friday, 10 May 2002 Plenary. The Eleventh International World Wide Web Conference (May 7-11, 2002; Sheraton Waikiki Hotel, Honolulu, Hawaii, USA). "... The Hollings bill is unlikely to pass during the current legislative session but it should be taken very seriously. Hollywood won't be satisfied until and unless general purpose computers have been tamed and the Internet has been rearchitected to make it safe for their products. Quite possible in the near term are little 'mini-Hollings' bills focused on specific technologies (e.g., requiring makers of digital televisions to build sets to respond to broadcast 'flags' which would allow or disallow copying of particular programs). Once several of these bills have passed, the momentum for more general legislation is likely to build. To oppose such legislation, it is not enough to say that the Hollings bill or little mini-Hollings bills are brain-dead or unenforceable. If you think general purpose computers and open information environments such as the World Wide Web are valuable, you are going to have to help build a new politics of intellectual property that will preserve these devices and infrastructure... A new politics of intellectual property is needed to counteract the content industry's drive toward ever stronger rights. More importantly, a broader awareness is needed that copyright deeply affects the information environment for us all... Here are some thoughts about who might participate in a new politics of intellectual property aimed at promoting a balanced information ecology. Obvious candidates include authors and artists (who need access to information, a robust public domain, and meaningful fair use rights), educational institutions, libraries, scholarly societies, computing professionals, computer manufacturers and other equipment providers who don't want Hollywood to be in charge of their research and development divisions, telecommunications companies and Internet service and access providers (who want to serve their customers and not become a new branch of the police), consumer groups, civil liberties organizations, and digital media companies who may have some radical business models that just might work if not shut down through litigation by established copyright industry groups who want to protect preferred business models. The agenda of a new politics of intellectual property obviously needs to be about more than just opposing the high protectionist initiatives of copyright industry groups. It should, of course, oppose legislation such as the Hollings bill, but the new politics needs to have a set of affirmative policy objectives of its own..." Note: Pamela Samuelson has been recognized as a leading authority on intellectual property.

[May 10, 2002] "Berners-Lee: Keep the Web Royalty-Free." By Edd Dumbill. From O'Reilly Network Weblogs (May 08, 2002). "In his opening keynote today at the Eleventh World Wide Web Conference in Honolulu, Hawaii, Tim Berners-Lee made a strong appeal for the development of the web to continue unencumbered by patent royalties. In a talk entitled 'Specs Count', Berners-Lee outlined how important it was that today's web technology specifications remain open and freely implementable. He described how accessing a web page today involved many layers of standards -- ethernet, IP, TCP, HTTP, MIME, XML, Namespaces, XHTML -- each layer of which relies critically on the layer below. As Berners-Lee is fond of noting, the web is 'not done yet', therefore it is not unreasonable to imagine a future with a similar number of layers built upon the existing ones. For that reason, it is still highly critical that the 'communal' nature of the specifications is preserved. Berners-Lee took off his hat as W3C Director for his speech, stressing that it was delivered as personal opinion: he was highly pointed in his support of royalty free licensing for web technology, a position that doesn't meet universal approval within the consortium. The W3C has itself had a difficult journey through issues of licensing its own standards. Reacting to a large amount of dissent from the web and free software community, it reversed plans to allow RAND ('reasonable and non-discriminatory') licensing terms on its specifications. The new patent policy is that every working group will aim to achieve royalty free licensing terms by the time a spec reaches the final Recommendation stage at the W3C. Outlining both the pros and cons of enforcing royalties on open specifications, Berners-Lee speculated that if the specifications driving the web had not been royalty-free, then none of the 900-strong audience would actually be at the conference. Enforcing royalties discourages adoption both by the open source community, who simply cannot pay royalties, however 'reasonable', and other companies who will shy away from the issues associated with licensing the technology..." See also the following bibliographic entry.

[May 09, 2002] "Berners-Lee Issues a Call to Arms." By Anne Chen. In eWEEK (May 09, 2002). "Tim Berners-Lee, director of the World Wide Web Consortium, opened the 11th annual International World Wide Web Conference here on Wednesday by challenging his colleagues not to get bogged down in arguments over existing specifications but to move forward and develop new ones while remaining focused on interoperability between standards... Berners-Lee also reiterated his opposition to allowing any W3C-based specifications to be covered by patent restrictions. Over the last year, the W3C has been embroiled in a controversy after a proposal to allow royalty-encumbered, patented technologies into Web standards attracted intense criticism and debate. Berners-Lee used his keynote as an opportunity to comment that he believes standards should remain royalty-free. 'All the forerunners of HTTP were developed under the ethos that they were for the common all,' he said. 'Looking back at what we have, it doesn't take very much to realize -- we should keep the same mindset. Nobody will do anything if they feel they're doing pro bono work for a company that will charge for new versions.' Berners-Lee said that, in order for the Web to continue to grow, every developer needs to have access to specifications without having to sign a licensing agreement or a non-disclosure agreement. 'What we're building on top is going to be much more exciting than what we've built underneath,' he said. 'This explosion happened because of you. You did it through interoperability and by keeping the Web open to all'..."

[May 07, 2002] "Web Services Hero." By David Berlind. In ZDNet Tech Update (May 07, 2002). ['Hewlett-Packard has put itself between a very interesting rock and a hard place when it comes to Web services. '] "The rock, more like bedrock, has been HP's long and virtuous stand against standards that, because of patents, could be encumbered by royalties to all who deploy them. In October [2001], HP refused to back IBM's and Microsoft's submission of Web Services Description Language (WSDL) to the World Wide Web Consortium (W3C)for consideration as an open Internet standard. HP went to the court of public opinion when Jim Bell, its director of standards and industry initiatives and W3C advisory committee representative, threw a gauntlet down, explaining HP's position against 'reasonable and non-discriminatory' (RAND) licensing, which is viewed as the opposite of royalty-free. HP then withdrew as a co-submitter of the WSDL proposal to the W3C. Only one other company, Apple, had the nerve to publicly stand by HP's side... Meanwhile, as a WS-I founding member, HP can't help but give the appearance that it too has backpedaled on the virtuous stand it took against patents on standards. What happened? Four months after putting a stake in the ground, did HP throw in the towel? If HP is still the white knight of standards, why didn't it refuse to join the WS-I and return, instead, to the court of public opinion? To find out, I interviewed HP's corporate counsel Scott Peterson. Two weeks ago, during a DOJ/FTC joint hearing on the connection between software patents and US antitrust policy, Peterson testified on the harmful effect that patents have on standards. Even though he agrees that being involved in the non-royalty-free WS-I looks bad, Peterson says HP has not changed its position on patents and standards one iota. 'I'm confident that what I have seen expressed from HP concerning the adverse effects that patents can have on standards is not a publicity stunt or a flash-in-the-pan interest. We're in it for the long haul,' he says..."

[May 06, 2002] "The Danger of Software Patents." By Richard Stallman. Comments on IP Law hearings. US Federal Trade Commission and DOJ, 'Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy: Notice of Public Hearings and Opportunity for Comment.' "This speech is about a way of misusing laws to make software development a dangerous activity. This is about what happens when patent law gets applied to the field of software. It is not about patenting software. That is a very bad way, a misleading way, to describe it, because it is not a matter of patenting individual programs. If it were, it would make no difference, it would be basically harmless. Instead, it is about patenting ideas. Every patent covers some idea. Software patents are patents which cover software ideas, ideas which you would use in developing software. That is what makes them a dangerous obstacle to all software development... People in high tech fields are not generally working on their own and that ideas don't come in a vacuum, they are based on ideas of others; and these people have pretty good chances of getting a job if they need to these days. So this scenario, the idea that a brilliant idea came from this brilliant [person] working alone is unrealistic, and the idea that he is in danger of starving is unrealistic. But it is conceivable that somebody could have an idea and this idea along with 100 or 200 other ideas can be the basis of making some kind of product, and that big companies might want to compete with him. So let's see what happens if he tries to use a patent to stop them. He says 'Oh No, IBM. You cannot compete with me. I've got this patent.' IBM says, 'Let's see. Let's look at your product. Hmmm. I've got this patent and this one and this one and this one and this one and this one, which parts of your product infringe. If you think you can fight against all of them in court, I will just go back and find some more. So, why don't you cross license with me?' And then this brilliant small inventor says 'Well, OK, I'll cross license'. So he can go back and make these wonderful whatever it is, but so can IBM. IBM gets access to his patent and gets the right to compete with him, which means this patent didn't 'protect' him at all. The patent system doesn't really do that. ... if you are a small inventor or work for a small company, the small company will not be able to do this. Small companies cannot get enough patents to do this. Any given patent is pointing in a certain direction. So if a small company has patents pointing there, there and there and somebody over there points a patent at them and says give me your money, they are helpless. IBM can do it [retaliate] because with 9000 patents, they are pointing everywhere; no matter where you are, there is probably an IBM patent pointing at you. So IBM can almost always make you cross license. Small companies can only occasionally make someone cross-license. They will say they want patents for defensive purposes but they won't get enough to be able to defend themselves..." [cache]

[April 2002] "Research Versus Development: Patent Pooling, Innovation and Standardization in the Software Industry." By Daniel Lin (Kirkland & Ellis, San Francisco, CA). In John Marshall Review of Intellectual Property Law Volume 1, Issue 2 (Spring 2002). "Patent pooling should generally be regarded as a practice with potentially strong pro-competitive benefits. With encouraging federal antitrust agencies and narrower claim interpretations under Festo, patent pooling arrangements seem ready for a resurgence. However, where the pooling involves a standard within a network industry, further research is needed to determine its effect on the standards innovation market. The current literature on standards typically begins its analyses from a presumption that that there are already existing alternative technologies trying to dethrone an incumbent standard. However, a patent pool arrangement for an incumbent standard may strengthen its position and actually result in fewer competing technologies. By decreasing access costs to participate in the standard, patent pooling increases the amount of participants in the standard, thereby spurring further efficiencies and improvements in the development of standardized products. However, at the same time, participants who would have otherwise researched new technologies to overcome the incumbent will now select the less risky choice of developing standardized products. This effect has the potential to reduce the level of research and invention in new technologies that can compete with the incumbent standard. Depending on the strength of this effect, the end result may be backward-compatible (and potentially cumbersome) innovations driven predominantly by the patent pool members who have strong incentives to maintain their position as the industry standard... "Also in PDF

[April 26, 2002] "Stallman: 'Patent licenses discriminate'." By Richard Stallman. In ZDNet Tech Update (April 23, 2002). "In order for standards to be useful for the general computer-using public, the standards must be freely implementable by all. In order to give free software a chance to compete, the standards must allow free software implementations. Many standards bodies do not insist on this -- they promulgate patent-restricted standards that the public cannot freely implement and that don't allow free software at all. These standards bodies typically have a policy of obtaining patent licenses that require a fixed fee per copy of a conforming program. They often refer to such licenses by the term 'RAND,' which stands for 'reasonable and non-discriminatory.' That term whitewashes a class of patent licenses that are normally neither reasonable nor non-discriminatory. It is true that these licenses do not discriminate against any specific person, but they do discriminate against the free software community, and that makes them unreasonable. Thus, half of 'RAND' is deceptive and the other half is prejudiced... Standards bodies should recognize that such licenses are discriminatory, and drop the use of the term 'reasonable and non-discriminatory' or 'RAND' to describe them. Until they do so, other writers who do not wish to join in the whitewashing would do well to reject that term. To accept and use it merely because patent-wielding companies have made it widespread is to let those companies dictate the views you express. I suggest the term 'uniform fee only,' or 'UFO' for short, as a replacement for 'RAND'..."

[April 26, 2002] "The Hidden Toll of Patents on Standards." By David Berlind. In ZDNet Tech Update (April 25, 2002). ['My recent reports regarding how Microsoft and IBM's control of next-generation Internet protocols could lead to the two companies' control of the Internet itself have resulted in a flood of responses via e-mail and ZDNet's TalkBack forums.'] "Consider the Web applications you've deployed in support of your business' bottom line. Most companies support simple applications, such as allowing customers to come browse their sites. Browsing is one example of an Internet application where all the protocols needed to make it work are freely available. To run your Web site, you can rely on a set of standard protocols like HTTP, HTML and TCP/IP, without any financial encumbrances from royalty seekers. That set of protocols is called a stack. Other Internet applications rely on other freely available protocol stacks. Examples include FTP for file transfer, NNTP for newsgroups, and SMTP for e-mail. Each application relies on a slightly different stack (usually with the same protocols like TCP/IP at the bottom). Today those stacks, from top to bottom, are royalty-free..." Note: Lawrence Lessig treats this topic at length in The Future of Ideas: The Fate of The Commons in a Connected World; he seeks to help readers understand how political forces brought to bear upon law and markets are indeed changing the world with respect to core freedoms, especially at the code and content layers.

[April 23, 2002] "West Wing Meets Web Services." 'Commentary Box' by Dan Farber. In ZDNet AnchorDesk (April 23, 2002). "... [companies are] angling to establish intellectual property rights and patents that would give them an advantage over competitors. They have the legal and engineering resources, as well as the economic incentive, to shift the balance of power. After all, the giant companies become giants by developing proprietary solutions that often include barriers to entry. Altruism is not a quality that would describe the builders of commercial or digital solutions in any market sector. Yet, the evolution of the Internet at its core levels requires a kind of altruism and cooperation to ensure continued innovation that favours the whole and not the few. Like the telephone or airline systems, there are many points along which value for services can be extracted to benefit the supplier and the customer. The question is at what point in a stack of protocols and standards does value extraction conflict with creating viable options for customers and impede innovation? [...] The entire issue is best summed up by comments made this week by Daniel Weitzner of the W3C before the Department of Justice and Federal Trade Commission: 'W3C, its Members, and many in the independent software developer community around the world who have contributed to the growth of the Web, have spent the last year in active discussion about the proper relationship between patents and Web standards. Our debate is not yet concluded, but we have learned together quite a bit about how important the tacit royalty-free licensing environment of the Web to-date has been for the development of extraordinary economic and social value that has been generated by the World Wide Web. Our commitment is to find an approach the insures the Web's growth into the future as a vibrant engine of technical innovation, economic productivity and social growth. Above all, we will find a solution that provides for the continued universality of the Web as an information medium, and avoids uses of intellectual property rights that could lead to Balkanisation of the Web'."

[April 18, 2002] "Will Patent Disputes Spoil the Web's Success?" By Adrian Mello. In ZDNet Tech Update (April 17, 2002). "... open standards -- as we have come to know them -- are under threat. That's because some technology vendors are trying to corral parts of the Web that most people believe are openly available standards by filing for patents and then twisting the arms of other companies to pay up or recognize those patents... Patent filings and disputes may play the role of spoiler as vendors like Microsoft, IBM, Sun, and others simultaneously attempt to promote standards while competing for commercial advantage..." The article cites for example British Telecommunications' claims relative to hyperlinking; Unisys patent on GIF (apparently to expire 2003); Microsoft's patent on 'style sheets for publishing system'; Intermind's claims relative to P3P (apparently now resolved in favor of W3C specification clear and free); UFIL Unified Data Technologies' claims pertaining to RDF, etc.

[April 18, 2002] "IBM Drops Internet Patent Bombshell." By David Berlind. In ZDNet Tech Update (April 16, 2002). "A recent IBM patent claim could threaten royalty-free access to a key Internet standard protocol backed by the United Nations. The standard -- called ebXML -- is an XML-based set of definitions for electronic transactions and business collaboration. IBM's patent claim was made in an intellectual property disclosure filed in late March with the Organization for the Advancement of Structured Information Standards (OASIS). Executives from both the United Nations and OASIS said they expected the ebXML specification to be royalty-free and unencumbered by patent claims. Both said they were surprised by the sudden appearance of the disclosure. According to IBM's disclosure statement, the company has one patent and one patent application that it believes are relevant to compliance with ebXML's Collaboration Protocol Profiles (CPPs) and Collaboration Protocol Agreements (CPAs) specifications..." [alternate URL]

[April 12, 2002] "IBM, Microsoft Plot Net Takeover." By David Berlind, Editorial Director of ZDNet Tech Update. (April 11, 2002). ['Quietly, these two giants have been building a toll booth that could position them to collect royalties on most if not all Internet traffic.'] "While the technologies that form the foundation of that toll booth have yet to be officially recognized as standards by an independent standards body, the collective strength of IBM and Microsoft could be enough to render Internet standards consortia powerless to stop them. The potential for the two giants to erect a toll booth is tied to the likelihood that Web services protocols such as SOAP, WSDL, and UDDI -- and the related ones to which the two companies hold patents -- will one day be as important as the standard protocols (such as TCP/IP and HTTP) on which the Internet is based today... For the most part, standards-setting for the Internet and Web has taken place within the working groups of two organizations: the Internet Engineering Task Force (IETF) and the World Wide Web Consortium (W3C). Until recently, neither organization had maintained a policy requiring vendors to make the intellectual property (IP) they contribute to the standards setting process available on a royalty-free basis. According to W3C Patent Policy Working Group Chairman Danny Weitzner, 'Despite the lack of a policy, there has always been an understanding amongst the various contributors that the Internet and the Web wouldn't be possible or scalable unless their contributions were available to everyone on a royalty-free basis.' But that gentleman's agreement has been tested several times over the years and it could end up being tested again by Microsoft and IBM. According to documents on the W3C's Web site, IBM and Microsoft not only hold patents to specific Web services protocols, but also have no intentions of relinquishing their IP rights to those protocols should they become standards. The documents indicate that the two companies are currently maintaining their rights to pursue a reasonable and non-discriminatory (RAND) licensing framework as opposed to a royalty-free-based framework. The RAND framework is widely acknowledged as the one that keeps a vendor's options open in terms of being able to charge content developers and Internet users a royalty for usage of relevant intellectual property... Against the backdrop of the W3C's emerging plan to adopt a primarily royalty-free-based patent policy, the royalty-free vs. RAND controversy reached full boil last October when Hewlett-Packard withdrew its support as a sponsor of IBM and Microsoft's W3C WSDL submission on the basis that WSDL might not be royalty-free. According to a statement by HP's director of standards and industry initiatives and W3C advisory committee representative Jim Bell, 'HP resigned as a co-submitter of the otherwise excellent Web Services Description Language (WSDL) proposal to W3C solely because other authors refused to let that proposal be royalty free.' [...] In its coverage of the controversy, Linux Today's version of Bell's statement includes a statement from W3C director Tim Berners-Lee declaring Web services protocols like WSDL to be common infrastructure protocols to which the royalty-free licensing framework should apply... [W3C's] Weitzner also acknowledges that, in addition to HP, Apple and Sun are wholeheartedly behind the royalty-free movement too. According to Sun's Manager of XML Industry Initiatives Simon Nicholson, 'Anyone should be able to use the specifications that define the Internet infrastructure without charge. We believe the best route to ensuring this is that such specs be licensed under royalty free terms.' Sun backed that position up when it relinquished a set of IP rights it had--a move that cleared the way for the royalty-free use of the W3C standard for Xlink'..."

[December 19, 2001] "Patents and Web Standards Town Hall Meeting." By Michael Champion [Chairman of the Patents Town Hall Meeting at XML 2001]. From XML.com. December 19, 2001. "The XML 2001 Conference and Exposition in Orlando, Florida sponsored a Town Hall meeting on 11 December [2001] that was billed as providing "an opportunity to listen to speakers describe the issues at stake in this controversy and to participate in debate over the best way for the Web community to respond." Despite vigorous efforts by conference chair Lauren Wood, the only person brave enough to face the public on this contentious issue was Daniel Weitzner, technology and society domain leader at the W3C and chair of the Patent Policy Working Group. Weitzner gave a 20-minute summary of the issues, the response from the public, and the reaction of the W3C Advisory Committee, then took comments and suggestions from the audience... Weitzner [reported that] the Patent Policy WG had been directed by the W3C Advisory Committee to rework the draft policy to have a strong preference for technology that is not encumbered by patents, or whose owners agree to make them freely available on a royalty-free basis. The Working Group has been expanded to include several invited experts from the open source and public software license community. The plan is to have a patent policy in place by May 2002... Voice technology is an area with many patents and little leeway for the Working Group to operate in RF mode. On the other hand, accessibility of the Web to people with physical limitations is a key part of the W3C's mission; many consider VoiceXML a high-level application, but blind people may consider it a key infrastructure component. This creates a genuine dilemma for the W3C..."

[November 16, 2001] "Keep Patents Out Of Standards, But Reward Innovation." By Richard Karpinski. November 16, 2001. In InternetWeek (November 16, 2001). "... let's not minimize the significance of the W3C's decision on patents. We've reached an important fork in the road. Attempting to patent W3C contributions takes that gamesmanship to dangerous levels and threatens the very foundation of the Web." Note: in the IW patents forum and poll ["Should contributors to the W3C standards process be allowed to patent their work and charge licensing fees for using those technologies?"] only 7% of readers thought companies ought to be able to charge licensing fees for their [W3C-related] 'patented inventions'.

[June 21, 2001] "Patently Absurd?" In The Economist Print Edition. [Intellectual Property.] June 21, 2001. ['Patents that protect not only inventions but also ways of distributing and selling them are causing -- any better at promoting innovation?'] "... The continuing controversy over patents for business methods centres on how to ensure that the American patent office awards only 'good' patents -- that is, patents for ideas that meet the three original legal requirements of being truly novel, non-obvious and useful. However, important as it is, this question has obscured a more pressing debate on whether even 'good' patents do what they are meant to do -- reward invention and, thereby, encourage innovation... Growing numbers of economists are unearthing evidence that America's patent regime is out of step with precisely those values it was designed to promote. Some believe that, in certain industries, strengthening intellectual-property protection accomplishes nothing positive. Others think that it may actually do some harm... Carl Shapiro, an economist at the Haas School of Business at the University of California, Berkeley, says that computing, semiconductor and information-technology firms now encounter a 'thicket' of patents that constrain their inventiveness. This phenomenon has been dubbed the 'Tragedy of the Anti-Commons' -- in contrast to the classic 'Tragedy of the Commons' that described how free resources such as fresh air and clean water could be over-used and destroyed by selfish agents. Here, the opposite occurs: when lots of property owners have to grant permission before a resource can be used, the result is that the resource tends to be chronically under-used. 'In the case of patents,' says Mr Shapiro, 'innovation is stifled.' Do firms become more innovative when they increase their patenting activity? Studies of the most patent-conscious business of all -- the semiconductor industry -- suggest they do not. Rosemarie Ziedonis at Wharton Business School in Pennsylvania and Bronwyn Hall at Haas found that investment in R&D (a reasonable proxy for innovation) did not substantially increase during the industry's most feverish period of patenting. Instead, semiconductor firms simply squeezed more patents out of each dollar they spent on R&D. From 1982 to 1992, the chip makers doubled their output of patents from 0.3 to 0.6 for every million dollars of R&D. That was at a time when the patent yield in other industries had barely budged. Had the chip makers really become more innovative? Or had they simply spent more of their R&D money on applied development and less on blue-sky research? More to the point, had they just started harvesting patents from their laboratories more systematically? The companies claimed not to have shifted their research strategies to be concentrating on more practical things. For their part, the Wharton and Haas economists found no evidence to suggest that the firms had become more innovative as patent rights became stronger..."

[April 2001] "Would You Buy a Patent License From This Man? You May Not Have a Choice." By Ian Mount. In Business 2.0 (April 2001). "TechSearch was founded in September 1997 by Brown, a hard-faced but friendly former corporate lawyer from the Chicago firm Jenner & Block, and five other partners. None was a technologist. Indeed, somewhat remarkably for a firm whose product is technological innovation, it has no lab and invents nothing. Instead, the firm was founded on Brown's realization that there were plenty of people who held valuable patents but who didn't have the resources or the know-how to demand payment... buys up patents on commonly used technologies, then approaches corporations, informs them that they are violating patents, and demands licensing fees. If they refuse to pay, TechSearch takes them to court. Brown has sold several dozen licenses for the Rozmanith patent, at $30,000 to $80,000 a pop, to clients ranging from Sara Lee to Walgreen's to Harrah's Entertainment... To critics of its techniques, TechSearch's business model amounts to nothing more than a low-grade extortion racket. With the average price of a patent infringement lawsuit -- including appeal -- running to $1.5 million per side as of 1998, according to the American Intellectual Property Law Association..."

[May 2001] "Patently Absurd." By Carol Pickering. In Business 2.0 (May 2001). ['The U.S. Patent and Trademark Office is fast heading toward irrelevancy because of overwhelming demands on its budget-constrained staff.'] "The federal Patent and Trademark Office (PTO) processed 311,087 patent applications last year, more than 100,000 over the average for the past five years. The office collected $1 billion in fees in 2000, making it one of the few federal agencies that does not need tax dollars. That's the good news. The bad news is that the patent office makes so much money, the federal government siphons off an average 14 percent of its cash to use elsewhere. And that, many believe, could end up hurting American businesses and inventors... The patent office's objective is to process patent applications within 14 months. Staffed with 3,000 patent examiners, it now takes an average of 25 months to process a patent. With the federal government's hiring freeze, that time is expected to increase to 31 months by 2005, according to the Intellectual Property Owners Association..."

[October 23, 2000] "Internet Society Panel on Business Method Patents." October 23, 2000. With: Q. Todd Dickinson (Undersecretary of commerce for intellectual property and director of the U.S. Patent and Trademark Office); Jay Walker (Founder and Vice Chairman of Priceline.com); Tim O'Reilly (Founder and President of O'Reilly Associates); Lawrence Lessig (Professor at the Stanford Law School and author of Code: And Other Laws of Cyberspace. On October 3, 2000 the Washington D.C. Chapter of the Internet Society hosted a panel on patents and the Internet at one of its regular meetings. Vint Cerf moderated the panel. A central issue that had been discussed was the question of 'business methods' patents and whether their issuance hampers free development of the Internet, and whether it is appropriate protection for businesses and individuals who invest in that development. Dickinson defended the 583 business-method patents that office approved last year, including the most famous - Amazon's one-click buying. At the other end of the spectrum, Lessig called for a moratorium on business method practices. For a summary of the panel discussion, see Grant Gross' report on NewsForge.

[October 04, 2000] "Patent Office Director [Q. Todd Dickinson]: My Hands Are Tied." Report by Grant Gross. October 04, 2000. "Lawrence Lessig, a Stanford law professor specializing in the Internet and advisor to the judge in the Microsoft anti-trust trial, argued that most developers of Internet-related software have worked in a culture where they built on each other's work and patents weren't considered. Those companies seeking hundreds of patents on software each year should have to prove those patents won't hinder the further development of the Internet, he said during a debate sponsored by D.C. Area Chapter of The Internet Society... Dickinson had just defended the Patent Office's decision to issue 583 software business-method patents in 1999 -- the office is on pace to issue 1,000 this year -- by saying courts have ruled software and business methods are patentable. Congress had made no move to make software patents more difficult to obtain, he added, despite growing criticism that the office is issuing patents for business ideas that are unoriginal or already widely used. Dickinson was apparently unaware that two Democratic congressmen recently introduced a bill to reform the patent process. 'Sometimes, I wish I was a professor and had time to think about these things,' said Dickinson, whose office issued 161,000 patents in 1999. 'I've got an office to run, and I've got 1,500 of these applications coming in every day.' Dickinson saying the office is too busy to deal with the issue 'seems to be an extraordinary indictment of our government-backed monopoly office,' Lessig responded. 'This is the most important part of our economy.'... What started as a structured discussion turned into the panelists interrupting each other and a business-suit clad crowd clapping or booing. The discussion started with moderator Vincent Cerf, co-inventor of the TCP/IP protocol, saying the Internet protocol may have never caught on if he hadn't allowed it to be widely distributed. He threw the ball to the patent defenders by saying: 'Any number of software patents have been granted over the last, let's say, 10 years, and a number of them appear to [govern] patents for what is widely-known technology that every undergraduate knows.' Walker rolled his eyes when O'Reilly and Lessig suggested the Patent Office should stop issuing software patents until a comprehensive study can figure out the potential harm to the growth of the industry..."

[July 1999] Tim Berners-Lee on Software Patents. Excerpt from Chapter 13 'Machines and the Web' in the book Weaving The Web. "I mention patents in passing, but in fact they are a great stumbling block for Web development... Software patents are new. The Internet ethos in the seventies and eighties was one of sharing for the common good, and it would have been unthinkable for a player to ask fees just for implementing a standard protocol such as HTTP. Now things are changing. Large companies stockpile patents as a threat of retaliation against suits from their peers. Small companies may be terrified to enter the business... The ethos now seems to be that patents are a matter of whatever you can get away with. Engineers, asked by company lawyers to provide patentable ideas every few months, resignedly hand over 'ideas' that make the engineers themselves cringe... The threshold of "innovation" is too low. Corporate lawyers are locked into a habit of arguing whatever advantage they can, and probably only determined corporate leadership can set the industry back on a sane track..."

[April 23, 1999] "The Problem With Patents." By Lawrence Lessig (Berkman Professor of Law, Harvard Law School). In The Industry Standard. "A patent is a form of regulation. It is a government-granted monopoly -- an exclusive right backed by the power of the state... There is growing skepticism among academics about whether such state-imposed monopolies help a rapidly evolving market such as the Internet. What is 'novel,' 'nonobvious' or 'useful' is hard enough to know in a relatively stable field. In a transforming market, it's nearly impossible for anyone -- let alone an underpaid worker in the U.S. Department of Commerce who spends on average of eight hours evaluating the prior art in a patent and gets paid based on how many he processes -- to identify what's 'novel.' Costly mistakes get made. On average it takes $1.2 million to challenge the validity of a patent, which means it is often cheaper simply to pay the royalties than to establish that the patent isn't deserved... To West Coast coders, it seems bizarre that East Coast coders -- the Patent Office -- consider these ideas nonobvious. But the real problem is the incentives such a system creates. Awarding patents of that type siphons off resources from technologists to lawyers -- from people making real products to people applying for regulatory privilege and protection. An increasingly significant cost of Net startups involves both defensive and offensive lawyering -- making sure you don't 'steal' someone else's 'idea' and quickly claiming as yours every 'idea' you can describe in a patent application. But this is absurd. When the world was given TCP/IP and the collection of protocols it induced, a billion ideas became obvious to anyone who took the time to think. These were not ideas that were discovered because some lone inventor spent years toiling away in his basement, but because TCP/IP was a language with which practically anything could be done..."

[February 28, 1991] "Against Software Patents." The League for Programming Freedom. "Software patents threaten to devastate America's computer industry... Patents do not cover specific systems: instead, they cover particular techniques that can be used to build systems, or particular features that systems can offer. Once a technique or feature is patented, it may not be used in a system without the permission of the patent-holder -- even if it is implemented in a different way. Since a computer program typically uses many techniques and provides many features, it can infringe many patents at once. Until recently, patents were not used in the software field... If nothing is changed, what is now an efficient creative activity will become prohibitively expensive. To picture the effects, imagine if each square of pavement on the sidewalk had an owner, and pedestrians required a license to step on it. Imagine the negotiations necessary to walk an entire block under this system. That is what writing a program will be like if software patents continue..." OpEd analogy: One does not need to be a conspiracy theorist to understand that the kind of thinking which allows monopolies on foundational ideas 'obvious-to-anyone' is just wrong. The notion that a wealthy commercial empire (e.g., AOL/Time Warner) can "own" public event space is likewise wrong: you go to a rock concert, sports event, or privately-owned vista for viewing a spectacular volcano eruption where are told that you cannot take pictures, or show your video to more than six people, because the rights to sound waves and light waves are "owned" by a large company who has the right to charge royalties for any replay. A presentation "What are Business Methods?" by Brian Kahin (Center for Information Policy, University of Maryland) reports the following, based upon a [5/24/00] interview with Q. Todd Dickinson (Director, US Patent and Trademark Office): Question, by Tim O'Reilly: Are you a lawyer by training? Answer by Q. Todd Dickinson: Yes, I am. Tim: How would you feel if a lawyer was able to patent an argument? Answer by Q. Todd Dickinson: If it was new and nonobvious, I wouldn't have a problem with it at all. See the context.

The definition of open referenced at the beginning of this document was created some three years before I decided that attempts to define "open standards" are of limited value. "Open" in the sense of not being required to ask permission is plausible, but it's just one plausible definition from among many. See more recently [2004-12] "Open Standards."

[IETF Patent Assertion Scenario] Allen Lo's prepared presentation for the 2002-04 FTC/DOJ Hearings describes a 'typical' situation of patent assertion in the sphere of networking in which the patent owners "hope to profit from the wide deployment of products that must implement Internet standards." The context is 'RAND' licensing under IETF rules in particular. "In a typical scenario, a patent owner initiates contact with a networking vendor. The patent owner asserts that the networking vendor's product complies with a particular standard (or set of standards) and that such compliance infringes one or more of its patents. The patent owner then demands payment of a royalty, usually a running royalty calculated as some percentage of sales revenue. Most of the situations I am aware of share the following characteristics: [1] the patent owner (usually a mature company) holds a large patent portfolio, including patents relating to networking technologies, and does not sell products that compete with the products it has accused of infringement; [2] the networking vendor (usually a smaller, younger company) has few or no patents relevant to the patent owner's principle business and has experienced a relatively high degree of success in selling products; [3] compliance with the standard (or set of standards) identified by the patent owner is necessary for interoperability in the Internet environment. These patent owners ultimately want money and are not seeking to protect some competitive advantage. As a tactic, however, they may threaten litigation and injunctions to maximize the royalty amounts that can be extracted. It is no coincidence that under this scenario, the patent owners are usually larger companies and the networking vendors are usually smaller, younger companies. Larger companies typically have large patent portfolios and will cross-license each other on a royalty-free basis. Smaller companies, however, typically lack comparable patent portfolios and thus are on unequal footing when it comes to negotiating patent licenses for standards they must implement in their Internet equipment. Evidence of this problem is not merely anecdotal..."

[Patents Promote and Impede Innovation] The paper "Intellectual Property Rights and Standard Setting Organizations" by Mark A. Lemley (Professor of Law, Boalt Hall, University of California, Berkeley) cites research on IPR as promoting innovation, but sometimes detrimental to it. Section V of the paper 'SSO IP Rules as Private Ordering in the Shadow of Patent Law' (pages 89-91) says: "Understanding the role of institutions in mediating the use of intellectual property rights is vitally important to understanding the complex relationship between intellectual property and innovation. Economic scholarship has demonstrated that intellectual property rights sometimes promote innovation, but at other times can actually impede it. This is particularly true in industries where innovation is cumulative, because granting strong intellectual property rights to initial innovators restricts the options available to improvers. Other work has shown that intellectual property rights are rarely enforced in court or licensed for a royalty, the uses that traditional incentive theory would predict. In a significant number of cases, intellectual property rights are obstacles to the optimal development of technology. This doesn't necessarily mean that granting intellectual property rights is a bad idea, however. Private parties can sometimes enter into licensing arrangements to avoid those obstacles..." [note references omitted here].

[Patents May Harm] See the preceding quotation from Lemley regarding restricted options when "innovation is cumulative. Lawrence Lessig's brief treatment of patents in The Future of Ideas: The Fate of The Commons in a Connected World likewise raises serious questions about the common assumption that software patents promote creativity and innovation in the sphere of Internet technologies. The book (pages 205-215) should be consulted for complete context and references to the technical literature (notes #62-#116, pages 316-324). Some excerpts:

[Given that getting more progress in 'science and useful arts' is the constitutional aim of patents], the question that must always be asked of any patent regime is whether we have good reason to believe that patents have that effect. As Harvard law professor Stephen Shavell has written, 'there is no necessity to marry the incentive to innovate to conferral of monopoly power in innovations.' So is there any evidence that it does any good? In some cases, the evidence is good. For some kinds of innovations, patents are extremely likely to induce more innovation. In particular, in theory, where innovation is independent, or noncumulative (meaning one invention is essentially separate from another), then economists predict that patents will clearly benefit innovation. Likewise, even where innovation is cumulative, if the use of the patent is clear, then in principle, the original patent holder will have a strong incentive to license a patent to follow-on innovators. But here, economists have an important qualification: If we don't know which direction an improvement is likely to take, then licensing may not occur, and patents here may actually do harm. Thus, for economists, at least, the theory suggests contexts in which innovation will be helped by patents as well as contexts where it will be harmed... The empirical evidence is less encouraging. The strongest conclusion one can draw is that whatever benefit patents provide (except in industries such as pharmaceutics), it is small..."

The Economist recently summarized a broad range of research: 'Do firms become more innovative when they increase their patenting activity? Studies of the most patent conscious business of all -- the semiconductor industry -- suggest they do not.' [note #73; see "Patently Absurd?"]

Beginning in the 1980s, courts started recognizing software inventions as patentable inventions. And by the early 1990s, these patents had taken off. Patent applications for software-related patents went from 250 in 1980 to 21,000 in 1999, and the number granted has increased eight- or ninefold. What was most striking about this explosion of law regulating innovation was that the putative beneficiaries of this regulation -- coders -- were fairly uniformly against it. As Richard Stallman put it, 'We did not ask for the change that was imposed upon us.' And this attitude was not limited to free software advocates...

There is the obvious 'hold-up' problem -- where an innovator is about to release a product and is discovered to be violating a patent. As Berkeley economist Carl Shapiro describes it: 'The hold-up problem is worst in industries where hundreds if not thousands of patents, some already issued, others pending, can potentially read on a given product... this "hold-up" problem is very real today, and... should [be considered] a problem of first-order significance in the years ahead.' This may be an unintended consequence of this recent expansion in protection... By letting things go as they are, this change may well give them a competitive advantage over the innovator who can't fund a legal team or isn't from the United States.

This story about the potential danger of patents in a field where innovation is sequential and complementary (where one builds on another, and the second complements the value of the first) gets additional support from an ingenious argument that Michigan law professor Michael Heller initially made... Heller introduces the concept of an 'anticommons.' If a commons is a resource where everyone has a right to use the resource (and therefore sometimes overuse the resource), an anticommons is a resource where many have the right to block the use of a resource by others (and therefore many more underuse the resource)... Nobel Prize-winning economist James Buchanan has expanded this idea to the problem of regulation generally. He points to the problem of patents in particular as an example where multiple and overlapping patent protection may create an anticommons, where innovators are afraid to innovate in a field because too many people have the right to veto the use of a particular resource or idea. This potential for strategic behavior by these many rights holders makes it irrational for an innovator to develop a particular idea, just as the possibility of veto by many bureaucrats may leave a particular piece of real property underdeveloped. These ideas map directly onto the argument weve considered in this book. Control, when complex, can often increase the costs of using a resource; increasing those costs can easily chill innovation..."

Locus of competition/cooperation? From a PPWG meeting: "... Another person thought that W3C should not place its imprimatur on standards embedding royalty-bearing patents, and that competition should be based on technical merit of products rather than upon a competitor's effectiveness in placing legal restraints upon the other competitors." This sentiment may be evaluated against the backdrop of a mantra often recited (e.g., by employees of Sun Microsystems [Simon Phipps], IBM [Marie Wieck], and Microsoft [Christopher Kurt]): "Cooperate on standards, Compete on implementation!" A process which truly seeks to eliminate or minimize competition and maximize cooperation in the standards forum is not consistent with a scenario in which one company (a) brings a mass of royalty-bearing patents to this standards forum, (b) seeks to ensure that the standard is developed in a way that maximizes the relevance of its essential [patent] claims, and (c) refuses to declare (in advance) that the standard under development will be exempt from their patent claims for any party that reciprocally agrees not to enforce its patent claims in this context.

[Warner List] Adam Warner's Famous Contributions list represents a valuable resource for those who do not have the time to wade through the "several thousand" email messages sent to W3C after its release of the draft W3C Patent Policy Framework, the comment period for which was announced as ending 30-September-2001. Adam says, therefore: "Please take into account that many of these contributions were were made under a significant time constraint (the original 30 September deadline)." Note also that Adam's list of some 50 postings includes only two examples characterized as "Those who are clearly for RAND licensing." In perusal of a few hundred (but not the entire "several thousand") email messages, I encountered only one posting, from Len Bullard, which seemed to support a RAND strategy for W3C; this judgment appeared to be made on pragmatic grounds, not on principles of fairness and best-Internet-policy. Probably there are more than three postings supportive of the draft policy; one wonders who will have written them, and what kind of defense they offer...

[Jon Bosak on Open Standards] Jon Bosak (Sun Microsystems) has been a public champion of legally unencumbered open standards for many years, having released several of his own publications freely under such terms. Jon played a significant role in the design of architectures and policies for ebXML (Electronic Business Using Extensible Markup Language). Sponsored by UN/CEFACT and OASIS, ebXML is "a modular suite of specifications that enables enterprises of any size and in any geographical location to conduct business over the Internet. Using ebXML, companies now have a standard method to exchange business messages, conduct trading relationships, communicate data in common terms and define and register business processes." To this date [2002-07-08] ebXML has managed [though barely] to sustain its goal of "royalty free" terms, as indicated in the FAQ document: "UN/CEFACT and OASIS provide ebXML specifications free of charge. There are no royalties or fees associated with the use of the ebXML specifications. Openness of the ebXML specifications is a requirement in order to encourage adoption." Jon Bosak is now taking a lead role in the development of open specifications of the OASIS Universal Business Language (UBL) TC, likewise chartered under RF principles, aiming to "vest ownership of UBL in OASIS, a nonprofit corporation dedicated to the adoption of structured information standards, and to make it freely available to everyone without licensing or other fees." XML.com's Edd Dumbill asked Jon what the UBL TC's position was with regard to patented technology. Jon: "... As the charter of the UBL TC makes clear, the people involved in UBL are contributing their work with the understanding that the result will be freely available to everyone without licensing or other fees. My possibly naive belief is that things like purchase orders and invoices have been around long enough that the issue of software patents simply doesn't apply them. This is actually one of the reasons for concentrating on documents rather than on business processes. A document like an invoice has to work in a lot of specific business processes, but it doesn't express or embody any particular process out of the infinite number it can work within. The big problem with business forms would be copyrights rather than patents. This is why we decided to start with a specification that was already free of copyright attachments. By starting with documents from which we have clear legal right to make a derivative work, and creating that work in an organization dedicated to making its specifications free to everyone, I'm hopeful that we can avoid intellectual property complications altogether..."